United States Federal Circuit

In a patent-infringement case involving the enforceability of patents for video-compression technology, determination that plaintiff had failed to disclose the patents to a standards-setting organization (SSO) of which it was a member, and declaration that the patents were therefore unenforceable against the world, is affirmed in part, vacated in part, and remanded where: 1) plaintiff had a duty to disclose the patents prior to the adoption of new standards by the SSO, which it breached; and 2) plaintiff had therefore waived its right to enforce its patents; but 3) the enforceability waiver was limited in scope to a subset of compliant products.

Appellate Information

• Decided 12/01/2008
• Published 12/01/2008

Judges

• PROST, Circuit Judge., Before MAYER, LOURIE, and PROST, Circuit Judges.

Court

• United States Federal Circuit

Counsel

• For Appellant:
  
• Carter G. Phillips, Sidley Austin LLP, of Washington, DC, argued for plaintiff-appellant.   With him on the brief were Stephen B. Kinnaird, Eric A. Shumsky, Peter S. Choi, and Ryan C. Morris.   Of counsel on the brief were David B. Salmons, Bingham McCutchen LLP, of Washington, DC, and Richard S. Taffet, of New York, NY;  William S. Boggs, Brian A. Foster, Timothy S. Blackford, and Stanley J. Panikowski, DLA Piper U.S. LLP, of San Diego, CA;  and Evan R. Chesler and Peter T. Barbur, Cravath, Swaine & Moore LLP, of New York, NY.


• For Appellees:
  
• William F. Lee, Wilmer Cutler Pickering Hale and Dorr LLP, of Boston, MA, argued for defendant-appellee.   With him on the brief were John J. Regan, Vinita Ferrera, Kate Saxton, and Carrie H. Seares.   Of counsel were Donald R. Steinberg and James L. Quarles, III, of Washington, DC.