If an accused product operates in accordance with a standard, then, for purposes of infringement, comparing the claims to that standard is the same as comparing the claims to the accused product.

Fujitsu Ltd. v. Netgear, Inc., No. 2010-1045 (Fed. Cir. Sept. 20, 2010).

The three patents at issue involve different aspects of wireless communications technologies. The district court dismissed the case on summary judgment, ruling that the accused infringer did not infringe any of the patents because the accused infringer’s products did not comply with the industry standard. On appeal, the Federal Circuit, affirmed-in-part, reversed-in-part, and remanded.

The Federal Circuit held that when analyzing infringement, industry standards may be used, as opposed to a particular requirement of proof for each accused product. Specifically, the court indicated that “if an accused product operates in accordance with a standard, then comparing the claims to that standard is the same as comparing the claims to the accused product.”

The Federal Circuit also noted that the industry standard approach has limits. “[I]n many instances, an industry standard does not provide the level of specificity required to establish that practicing that standard would always result in infringement” or, in other instances, “the relevant section of the standard is optional.” In such cases, “the patent owner must compare the claims to the accused products or, if appropriate, prove that the accused products implement any relevant optional sections of the standard.” Accordingly, unless the claims simply require the capacity to perform a certain element, “it is not enough to simply show that a product is capable of infringement; the patent owner must show evidence of specific instances of direct infringement.”

As to claim construction, the Federal Circuit reiterated that the claims must be construed in light of the particular embodiments of the specification that are the subject of those claims. In this case, the claims at issue were related to specific embodiments in the specification. For those “embodiments [which] are not the subject of the claims at issue,” it would be incorrect to construe the claims at issue in light of those embodiments.

A copy of the opinion can be found here.