The US Court of Appeals for the Federal Circuit, in reversing (in part) a district court’s rejection of an implied waiver defense, concluded that a patent may be unenforceable where the patent owner failed to disclose a prior patent application. Core Wireless Licensing S.A.R.L. v. Apple Inc., Case No. 17-2102 (Fed. Cir. Aug. 16, 2018) (Bryson, J).

Core Wireless sued Apple for infringement of its patents related to improvements in the way mobile devices communicate with base stations. For one of the patents, Apple asserted that the patent was unenforceable due to an implied waiver. The trial court held a short supplemental bench trial to specifically address the issue. 

In 1997 and 1998, European Telecommunications Standards Institute (ETSI), a global standards organization, developed technical proposals to address a problem of propagation delay in GPRS networks. The inventor of the patent, a Nokia employee, prepared an invention report for Nokia that described the invention’s technical attributes. The invention report stated that the functionality in the patent was not yet stated in the GPRS specifications. The report asserted that Nokia’s competitors would likely want to use the invention because it would be added to the GPRS specification. Nokia submitted the proposal to the ETSI working group. Ultimately, ETSI rejected Nokia’s proposal in favor of another. 

The same month Nokia submitted its proposal to ETSI, it filed a Finnish patent application based on the invention, to which the asserted US patent claims priority. The Finnish application was not disclosed to ETSI. Apple argued that Nokia had an obligation to disclose the Finnish patent application to ETSI when it advanced its proposed revision of the standard. Apple asserted that since the Finnish application was not disclosed to ETSI, Nokia waived its right to enforce the patent. Since Nokia waived its right, Apple asserted that Core Wireless, the successor-in-interest to the patent, had no right to sue.

The district court issued an order addressing the implied waiver issue in a single paragraph, finding that Nokia did not have a duty to disclose the Finnish application for two reasons: “(1) Nokia’s proposal was rejected; and (2) the patent claims were not finalized until 2002. Nokia disclosed the patent in 2002, shortly after it could point to the contours of its [intellectual property rights] with specificity because the claims were allowed.” The district court also noted that Apple presented no evidence that an ETSI member or other entity interpreted Nokia’s failure to disclose the Finnish patent as evidence that Nokia relinquished its patent rights, and ultimately rejected Apple’s theory of implied waiver. Apple appealed.

The Federal Circuit rejected the district court’s finding that Nokia did not have a duty to disclose its patent application because its proposal was rejected as unsupported by the evidence. Rather, as the Court noted, “ETSI’s intellectual property rights policy states that the disclosure requirement attaches to a member ‘submitting a technical proposal’ if that party has intellectual property that ‘might’ be essential ‘if that proposal is adopted.’” As the Court noted, the “district court’s interpretation of the policy would undermine the very purpose of disclosure,”

i.e., to permit the standards-setting decision makers to make an informed choice about whether to adopt a particular proposal.

Rather, an ETSI member’s duty to disclose a patent application on particular technology attaches at the time of the proposal and is not contingent on ETSI ultimately deciding to include that technology in an ETSI standard. The Federal Circuit further concluded that the district court erred in limiting the ETSI disclosure requirement to issued patents, finding that it expressly applied to applications as well.

Finally, the Federal Circuit found the district court’s determination that there was no evidence that the ETSI members understood Nokia to have intended to waive its patent rights to be irrelevant: “there is no requirement under the implied waiver doctrine that a third party must interpret the patentee’s conduct as constituting a waiver of its rights to enforce the patent; such analysis is more relevant to equitable estoppel.” 

The Federal Circuit remanded the matter back to the district court for it to consider whether Nokia benefited from the failure to disclose, noting that “in some circumstances courts have held that an equitable defense will not be recognized if the offending party did not gain a benefit from its wrongdoing.” It also directed the court to consider the basic fairness of the equitable remedy in terms of whether Nokia/Core Wireless’ conduct was sufficiently egregious to justify a finding of implied waiver.