IF YOU BUILD A BUSINESS ON AN INFRINGING PRODUCT YOU CAN'T COMPLAIN WHEN AN INJUNCTION DESTROYS THE BUSINESS

Acumed LLC, v. Stryker Corporation, [2008-1124] (December 30, 2008) [LOURIE, Mayer, Gajarsa] The Federal Circuit affirmed the grant of a permanent injunction.
DISCUSSION: Following eBay, a patentee must satisfy the well-established four-factor test for injunctive relief before a court may grant a permanent injunction. The Federal Circuit reviews the grant of a preliminary for abuse of discretion. Abuse of discretion may be found on a showing “that the court made a clear error of judgment in weighing relevant factors or exercised its discretion based upon an error of law or clearly erroneous factual findings.”
The Federal Circuit said that the essential attribute of a patent grant is that it provides a right to exclude competitors from infringing the patent. In view of that right, infringement may cause a patentee irreparable harm not remediable by a reasonable royalty. The Federal Circuit said that the fact that a patentee has previously chosen to license the patent may indicate that a reasonable royalty does compensate for an infringement, that is but one factor for the district court to consider. The fact of the grant of previous licenses, the identity of the past licensees, the experience in the market since the licenses were granted, and the identity of the new infringer all may affect the district court’s discretionary decision concerning whether a reasonable royalty from an infringer constitutes damages adequate to compensate for the infringement.

FEDERAL CIRCUIT TEACHES THE E.D. OF TEXAS ABOUT FORUM NON CONVENIENS

In re TS Tech USA Corporation, [Miscellaneous Docket No. 888] (December 29, 2008) [RADER. Michel, Prost] The Federal Circuit granted a writ of mandamus because the district court clearly abused its discretion in denying TS Tech’s motion to transfer venue pursuant to 28 U.S.C. § 1404(a).
DISCUSSION: The Federal Circuit applied The Fifth Circuit applies the “public” and “private” factors for determining forum non conveniens when deciding a § 1404(a) venue transfer question. The “private” interest factors include (1) the relative ease of access to sources of proof; (2) the availability of compulsory process to secure the attendance of witnesses; (3) the cost of attendance for willing witnesses; and (4) all other practical problems that make a trial easy, expeditious and inexpensive. The “public” interest factors to be considered are (1) the administrative difficulties flowing from court congestion; (2) the local interest in having localized interests decided at home; (3) the familiarity of the forum with the law that will govern the case; and (4) the avoidance of unnecessary problems of conflicts of laws or in the application of foreign law. The Federal Circuit identified four errors committed by the district court: First, the district court gave too much weight to Lear’s choice of venue under Fifth Circuit law. Second the district court ignored Fifth Circuit precedent in assessing the cost of attendance for witnesses, including additional travel time, meal and lodging expenses; and time away from employment, for which the Fifth Circuit established a 100-mile rule. Third, the district court erred by reading out of the § 1404(a) analysis the factor regarding the relative ease of access to sources of proof. Finally, the district court disregarded Fifth Circuit precedent in analyzing the public interest in having localized interests decided at home.

EXPERTS IN PATENT CASES NEED EXPERTISE

Sundance, Inc. v. Demonte Fabricating Ltd., [2008-1068, -1115] (December 24, 2008) [MOORE, Dyk, Prost] The Federal Circuit reversed JMOL of validity of U.S. Patent No. 5,026,109.
DISCUSSION: On appeal Sundance complained about the denial of its motion in limine to exclude expert testimony of a patent lawyer who was not an expert in the art. The Federal Circuit agreed, holding that unless a patent lawyer is also a qualified technical expert, his or her testimony on the issues of validity and infringement is improper and thus inadmissible. QUOTE: “We hold that it is an abuse of discretion to permit a witness to testify as an expert on the issues of noninfringement or invalidity unless that witness is qualified as an expert in the pertinent art.” The Federal Circuit said that with regard to invalidity a witness not qualified in the pertinent art may not testify as an expert as to anticipation, or any of the underlying questions, such as the nature of the claimed invention, what a prior art references discloses, or whether the asserted claims read on the prior art reference. Nor may a witness not qualified in the pertinent art testify as an expert on obviousness, or any of the underlying technical questions, such as the nature of the claimed invention, the scope and content of prior art, the differences between the claimed invention and the prior art, or the motivation of one of ordinary skill in the art to combine these references to achieve the claimed invention.
Regarding the grant of JMOL, the Federal Circuited noted that the consequence of its holding that the testimony of the patent attorney should have been excluded is that there was no expert testimony supporting a holding of obviousness. However, the Federal Circuit concluded that no such testimony was required because there are no underlying factual issues in dispute as to obviousness. The Court noted that the technology was simple (although not enough to make defendant’s witness, who held a Bachelor of Science Degree with high honors in Mechanical Engineering from Michigan Technological University, an expert) and neither party claimed that expert testimony is required to support such a holding.

IF A COMPONENT DOES NOT HAVE A SUBSTANTIAL NON-INFRINGING USE, THEN THE ASSEMBLY DOES NOT EITHER

Ricoh Company, Ltd., v. Quanta Computer Inc., [2007-1567] QUANTA STORAGE, INC., (December 23, 2008) [GAJARSA, LINN, and DYK] The Federal Circuit reversed summary judgment of no contributory or inducement of infringement, but affirmed that the asserted claims of U.S. Patent No. 6,631,109 are invalid for obviousness and that the accused devices do not practice the methods of the asserted claims of U.S. Patent No. 6,172,955.
DISCUSSION: The Federal Circuit said that a process consists of doing something, and therefore has to be carried out or performed. In contrast, software is not itself a sequence of actions, but rather it is a set of instructions that directs hardware to perform a sequence of actions. Because the allegedly infringing sale in this case was the sale of software (i.e., instructions to perform a process rather than the performance of the process itself), the Federal Circuit did not have to decide whether a process may ever be sold so as to give rise to liability under § 271(a). It held that that a party that sells or offers to sell software containing instructions to perform a patented method does not infringe the patent under § 271(a).
Regarding contributory infringement, the Federal Circuit said that It appears to be undisputed that, if there was direct infringement Quanta would be liable under § 271(c) if it imported into or sold within the United States a bare component that had no use other than practicing the methods of the ’552 and ’755 patents. Such a component, specially adapted for use in the patented process and with no substantial noninfringing use, would plainly be “good for nothing else” but infringement of the patented process. The Federal Circuit said that It thus follows that Quanta should not be permitted to escape liability as a contributory infringer merely by embedding that microcontroller in a larger product with some additional, separable feature before importing and selling it. The Federal Circuit said that if it were to hold otherwise, then so long as the resulting product, as a whole, has a substantial non-infringing use based solely on the additional feature, no contributory liability would exist despite the presence of a component that, if sold alone, plainly would incur liability. As further justification for its determination, the Federal Circuit observed that the potential for induced infringement liability in these situations was not a practical substitute for contributory infringement liability, because unlike contributory infringement, induced infringement liability under § 271(b) requires proof that the inducer has an affirmative intent to cause direct infringement.On the issue of inducement, the Federal Circuit noted that liability for active inducement may be found where evidence goes beyond a product’s characteristics or the knowledge that it may be put to infringing uses, and shows statements or actions directed to promoting infringement. The Federal Circuit rejected the district court’s requirement that there be some communication between the inducer and the direct infringer, noting that proving that a message was sent out is the preeminent, but not exclusive, way of showing that active steps were taken with the purpose of bringing about infringing acts. Thus the incorporation of components that only had infringing use was sufficient to create a question of fact about intent to induce infringement.

REPRESENTATIVE CLAIMS MUST BE REPRESENTATIVE

Hyatt v. Dudas, [2007-1050, -1051, -1052, -1053] (December 23, 2008) [GAJARSA, Newman, and Ward] The Federal Circuit affirmed the district court’s remand of the appeal of Hyatt’s twelve patent applications for consideration of each of the claims, rather than consideration of “representative” claims.
DISCUSSION: Hyatt brought four civil actions under 35 U.S.C. § 145 (2000) challenging decisions of the BPAI affirming the rejection of his claims. Hyatt had 2400 claims pending in 12 applications, but the BPAI concluded that Hyatt had separately argued only twenty-one of his claims because these were the only claims that Hyatt had discussed in the “Summary of the Invention” sections of his briefs to the Board. On this basis, the Board selected these twenty-one claims as representative of the approximately 2,400 claims on appeal. Upon consideration of these representative claims, the Board affirmed the examiner’s rejections and thereupon affirmed the rejections of the non-representative claims. The Federal Circuit agreed with the district court that the Board misinterpreted the meaning of “ground of rejection” in section 1.192(c)(7) and, as a result, improperly selected certain claims to be representative of groups of claims that were rejected on different grounds. The Patent Office took the position that “ground of rejection” meant statutory ground of rejection, and thus it could consider whether all claims failed to meet the written description requirement, based upon a representative claim. The Federal Circuit agreed with Hyatt, that the Patent Office also had to consider the reason why the particular claim was rejected.

THE PATENT OFFICE MUST APPLY BROADEST REASONABLE INTERPRETATION OF CLAIMS UNDER EXAMINATION

In Re Wheeler, [2008-1215 (Serial No. 10/899,352)] (December 19, 2008) NON-PRECEDENTIAL [NEWMAN, Mayer, Lourie] The Federal Circuit reversed the anticipation rejection of claims to a lighted, transparent fishing pole.
DISCUSSION: The claims were directed to a transparent lighted fishing pole with a light source in the handle to illuminate the pole. The claims were rejected over a reference showing a light at the tip of the fishing pole. The Patent Office took the position that the claims did not explicitly require that the entire length of the pole be transparent. The Federal Circuit held that although claims during examination are given their broadest reasonable interpretation in order to facilitate precision in claiming, that interpretation must be “consistent with the specification, [and] claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art." All may not be well for Mr. Wheeler, as the Federal Circuit explicitly noted that it was constrained to consider the Patent Offices action, and could not substitute its own judgement, suggesting that another rejection is in his future.

ON REMAND, MANDATE LIMITS CONDUCT OF CASE

Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., [2007-1296, -1347] (December 18, 2008) [LOURIE, Newman, Mayer] The Federal Circuit reversed summary judgment of invalidity, and remanded for determination of the damages award.
DISCUSSION: The Federal Circuit changed the claim construction and remanded, and on remand the district court considered defendant’s anticipation arguments, and found the patent invalid. The patentee argued that it anticipation was beyond the scope of the remand. The Federal Circuit boiled the issue down to whether the anticipation was directly related to the changed claim construction, and found that while it is true that new anticipation arguments may arise under a change in claim construction, that cannot be the case here because the limitation at issue never served as a basis for distinguishing the prior art from the patent.

OBVIOUSNESS ISSUE WAIVED BY FAILURE TO MOVE FOR JMOL

Rentrop v. The Spectranetics Corporation, [2007-1560] (December 18, 2008) [WALKER, Michel, Friedman] The Federal Circuit affirmed judgment for Rentrop resulting in a $500,000 damage award.
DISCUSSION: The Federal Circuit rejected Spectranetics’ arguments about obvious as waived since it did not move for JMOL, and rejected its challenge to the pre-KSR jury instructions as waived since final judgment was not entered until four months after the KSR decision. The Federal Circuit found substantial evidence to support the finding of infringement, and agreed with the district court’s analysis of the inequitable conduct issues.

CLAIMS CONSTRUED IN LIGHT OF SPECIFICATION, DRAWINGS, AND OTHER CLAIMS

Respironics, Inc. v. Invacare Corp., [2008-1164, -1193] (December 16, 2008) NON-PRECEDENTIAL The Federal Circuit affirmed non-infringement of U.S. Patents No. 5,148,802 and 5,433,193, but because the district court erred in construing the term “shape” in the ’575 patent and erred in granting summary judgment of no anticipation of U.S. Patent Nos. 6,105,575 and 6,609,517, and vacated the grant of summary judgment of noninfringement of the ’575 patent, and reversed the grant of summary judgment of validity of the ’575 and ’517 patents.
DISCUSSION: Addressing infringement, the Federal Circuited noted that the mere fact that step four refers back to “said higher and said lower pressure magnitudes” of step one does not, as a rule, require step one to be performed before step four. However after examining the specification, the Federal Circuit noted that the preselection of higher and lower pressure magnitudes is not merely a preferred embodiment; it is the patents’ only embodiment. Thus the Federal Circuit concluded that the district court correctly construed the term “selected higher and lower pressure magnitudes” to require the pressure magnitudes to be chosen prior to operation of the computer circuitry that is used to determine whether the patient is inhaling or exhaling.
Regarding the limitation “shape”, the Federal Circuit looked to claim differentiation and to the specification and drawings to conclude that the shape of the pressure profile was different from magnitude and duration. Under this new construction, the Federal Circuit vacated the grant of summary judgment with respect to noninfringement.

CEASE AND DESIST LETTERS ARE NOT ENOUGH TO CONFER PERSONAL JURISDICTION

Avocent Huntsville Corp. v. Aten International Co., Ltd., [2007-1553] (December 16, 2008) [LINN, Newman, Schall] The Federal Circuit affirmed the district courts dismissal of a declaratory judgment action against a Taiwanese company for lack of personal jurisdiction, because plaintiffs failed to allege that the Taiwanese company purposefully directed any activities beyond merely sending notice letters at residents of the forum and that the declaratory judgment action arose out of or related to those activities.
DISCUSSION: Aten sent three letters concerning its patent applications and patents. The first was a letter dated May 28, 2004, from counsel for Aten Technology to CEO and President of Avocent giving notice of two pending patent applications. The second was a letter dated April 27, 2006, from IOGEAR to Amazon in Seattle, Washington, encouraging Amazon to discontinue selling various products allegedly infringing the ’112 patent, including the “Avocent SVM200.” As a result of these letters, Avocent brought this declaratory judgment action. Determining whether personal jurisdiction exists over an out-of-state defendant involves two inquiries: whether a forum state’s long-arm statute permits service of process, and whether the assertion of personal jurisdiction would violate due process.” Because Alabama’s long-arm statute permits service of process “as broad as the permissible limits of due process, the jurisdictional analysis collapsed into a single determination of whether the exercise of personal jurisdiction comports with due process.
Due process requires that to subject a defendant not present in the district to jurisdiction, the defendant have certain minimum contacts with it such that the maintenance of the suit does not offend traditional notions of fair play and substantial justice. The Federal Circuit said that a patentee should not subject itself to personal jurisdiction in a forum solely by informing a party who happens to be located there of suspected infringement, noting that grounding personal jurisdiction on such contacts alone would not comport with principles of fairness. A patent owner may, without more, send cease and desist letters to a suspected infringer, or its customers, without being subjected to personal jurisdiction in the suspected infringer’s home state.

"MECHANISM" = "MEANS"

Welker Bearing Company v. PHD, Incorporated, [2008-1169] (December 15, 2008) [RADER, Schall, Prost] The Federal Circuit affirmed summary judgment of non-infringement of U.S. Patent Nos. 6,786,478 and 6,913,254.
DISCUSSION: At issue was the claim limitation “by a mechanism for rotating in response to said rectilinear movement of said locating pin for moving said finger radially”, which the district court correctly construed as subject to 35 U.S.C. § 112 ¶ 6.
The Federal Circuit noted that the claim did not include the word “means,” but instead the similar word “mechanism.” This Federal Circuit reviewed its prior handling of “mechanism”. In Massachusetts Institute Of Technology v. Abacus the Federal Circuit said “[t]he generic terms ‘mechanism,’ ‘means,’ ‘element,’ and ‘device,’ typically do not connote sufficiently definite structure [to avoid means-plus-function treatment] . . . The term ‘mechanism’ standing alone connotes no more structure than the term ‘means.’” Although the Federal Circuit said that claim language that further defines a generic term like ‘mechanism’ can sometimes add sufficient structure to avoid 112 ¶ 6, the adjectival modifier “colorant selection” was not defined in the specification and did not carry any generally understood structural meaning in the art. However, in Greenberg v. Ethicon Endo-Surgery, Inc. the Federal Circuit held that paragraph 6 did not apply to the term “detent mechanism, because the noun detent denotes a type of device with a generally understood meaning in the mechanical arts, even though the definitions are expressed in functional terms.
The Federal Circuited noted that no adjective endows the claimed “mechanism” with a physical or structural component. The Federal Circuit further noted that the claim provides no structural context for determining the characteristics of the “mechanism” other than to describe its function. Thus, the Federal Circuit concluded that the unadorned term “mechanism” is “simply a nonce word or a verbal construct that is not recognized as the name of structure and is simply a substitute for the term ‘means for.’” The Federal Circuit noted a number of ways the patentee could have added structure to the limitation, but did not. Looking to the specification, the Federal Circuit affirmed the district court’s determination that the claim was not infringed.

ENANTIOMERS ARE NOT NECESSARILY OBVIOUS

Sanofi-Synthelabo v. Apotex, Inc., [2007-1438] (December 12, 2008) [NEWMAN, Lourie, Bryson] The Federal Circuit affirmed the district court’s ruling sustaining validity of U.S. Patent No. 4,847,265 on Plavix®.
DISCUSSION: The Federal Circuited noted that it has recognized the known difficulty of separating enantiomers and the unpredictability of their properties, and held that a reference that stated that a compound has enantiomers did not enable the separation of those enantiomers, where the reference did not teach how to obtain the enantiomer. The Federal Circuit found no clear error in the district court’s finding herein that the reference patents would not have enabled a person of ordinary skill to obtain clopidogrel substantially separated from the levorotatory enantiomer, and affirmed the finding of validity. As to obviousness, the Federal Circuit noted obviousness cannot be avoided simply by a showing of some degree of unpredictability in the art so long as there was a reasonable probability of success.” However, the Federal Circuit noted that on the basis of the trial evidence, the district court found that a person of ordinary skill in this field would not reasonably have predicted that the dextrorotatory enantiomer would provide all of the antiplatelet activity and none of the adverse neurotoxicity. Clear error has not been shown in this finding, and in the conclusion of nonobviousness based thereon. The difficulties in separating the enantiomers also contributed to the non-obviousness.

FEDERAL CIRCUIT'S JURISDICTION ON APPEAL FROM DENIAL OF PRELIMINARY INJUNCTION IS LIMITED

ILOR, Llc v. Google, Inc., [2008-1178] (December 11, 2008) [LINN, Mayer, Moore] The Federal Circuit held that the district court did not abuse its discretion by denying iLORs’ motion for a preliminary injunction.
DISCUSSION: The Federal Circuit concluded that the district court correctly construed the sole claim limitation at issue, and did not abuse its discretion by denying iLOR’s motion for preliminary injunctive relief because noninfringement was undisputed under that construction. The bigger issue is the basis for the Federal Circuit’s jurisdiction. The Federal Circuit found that the there was no final judgment, and that its jurisdiction arose solely from the denial of the preliminary injunction.

"The Present Invention" does not Automatically Limit Claims in All Cases, But it Did Here

Netcraft Corporation v. Ebay, Inc., [2008-1263] (December 9, 2008) [PROST, Bryson, Linn] The Federal Circuit affirmed summary judgment of non-infringement of U.S. Patent Nos. 6,351,739 and 6,976,008.
DISCUSSION: The Federal Circuit agreed with the district court that “providing a communications link through equipment of the third party,” required “providing customers with internet access.” Because the parties agreed that Defendants do not provide internet access to customers, summary judgment was appropriate.
The Federal Circuit conceded that the lay meaning of “communications link” standing alone may be broader than “internet access,” but said it was not construing this term standing alone. The Federal Circuit instructed that in order to properly determine the ordinary meaning of the entire phrase at issue in this case, it must consider the claim terms in light of the entire patent. The Federal Circuit found that based on a reading of the common specification in its entirety, along with the cited prosecution history, the claim limitation “providing a communications link through equipment of the third party” requires providing customers with internet access.
The Federal Circuit noted the repeated identification of “the present invention” in the Summary of the Invention as requiring internet communication. The Federal Circuit said that use of the phrase “the invention” does not “automatically” limit the meaning of claim terms in all circumstances, stating that such language must be read in the context of the entire specification and prosecution history. However the Federal Circuit found that under the circumstances the claims were limited. The Federal Circuit even found support in the Abstract. The Federal Circuit attached less significance to the prosecution history, noting that because the prosecution history represents an ongoing negotiation between the PTO and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the specification and thus is less useful for claim construction purposes.

$16.8 Million Attorneys' Fees Award Affirmed

Takeda Chemical Industries, Ltd., v. Mylan Laboratories, Inc., [2007-1269, -1270] (December 8, 2008) [LOURIE, Rader, Bryson] The Federal Circuit affirmed attorneys fees awards for to Takeda of $11,400,000 from Mylan and $5,400,000 from Alphapharm, with interest.
DISCUSSION: 35 U.S.C. § 285 provides that a trial court “in exceptional cases may award reasonable attorney fees to the prevailing party.” The decision to award attorney fees is within the discretion of the trial judge, but the conclusion that a case is exceptional is a finding of fact reviewable only for clear error. The Federal Circuit also affirmed the award of Expert Fees, noting that a district court may invoke its inherent power to impose sanctions in the form of reasonable expert fees in excess of what is provided for by statute.

Substantial New Question of Patentability is Not Necessarily a Substantial Question of Validity

The Procter & Gamble Company v. Kraft Foods Global, Inc., [2008-1105] (December 5, 2008) [GAJARSA, Bryson, Dyk] The Federal vacated a stay initiated by Kraft pending reexamination of Kraft’s patent, and remanded for consideration of the merits of P&G’s motion for a preliminary injunction.
DISCUSSION: The Federal Circuit said tha the district court abused its discretion by effectively denying P&G’s motion for a preliminary injunction without considering and balancing the required factors. The Federal Circuit the district instructed the district court to consider the current posture of the reexamination proceeding, and cautioned it not to equate the “substantial new question of patentability” standard for whether reexamination should take place, with the with the “substantial question of validity” standard by which a defendant may prevent a patentee from demonstrating a likelihood of success on the merits.
Regarding the stay, the Federal Circuit rejected Kraft’s argument that the statute only authorizes patentees to obtain stays, noting that a district court has historically had the power to stay proceedings grant stays to control its docket. The Federal Circuit added that we note that the district court ordinarily should not grant both a preliminary injunction and a stay.

Fame Plays a Dominant Part of Likelihood of Confusion Analysis

Hainline v. Vanity Fair, Inc., [2008-1313 (Opposition Nos. 91/163,354; 91/166,973; and 91/166,975)] (December 5, 2008) [MAYER, DYK, HUFF] NON-PRECEDENTIAL The Federal Circuit affirmed the TTAB sustaining Vanity Fair’s oppositions.
DISCUSSION: The Federal Circuit held fame of a prior mark can play a “dominant” role in the process of balancing the DuPont factors. The Federal Circuit noted that “[a] famous mark is one ‘with extensive public recognition and renown.’’’ The Federal Circuit said “[F]amous marks are more likely to be remembered and associated in the public mind than a weaker mark.” Id. Thus, the fact that Vanity Fair products have achieved significant fame weighs strongly in favor of a conclusion of likely confusion. The Federal Circuit examined other factors, including the similarity of the goods, channels of trade, and the similarity of the marks and affirmed the TTAB that VANITY AND SANITY was confusingly similar to VANITY FAIR.

Patentee Enjoined from Threatening to Assert Patent

Unitronics (1989) (R”G) LTD. v. Gharb, [2008-1442] (December 3, 2008) [NEWMAN, LINN, and MOORE] The Federal Circuit affirmed a permanent injunction against defendant asserting or threatening to assert U.S. Patent No. 6,552,654 against Unitronics.

Failure to Disclose Patents to a Standards-Setting Organization Can Impair Enforceability of the Patents

Qualcomm Incorporated v. Broadcom Corporation, [2007-1545, 2008-1162] (December 1, 2008) [PROST, Mayer, Lourie] The Federal Circuit affirmed the district court’s determinations that Qualcomm had a duty to disclose the asserted patents to the JVT, that it breached this duty, but vacated the unenforceability judgment and remanded with instructions to enter an unenforceability remedy limited in scope to H.264-compliant products.
DISCUSSION: By failing to disclose relevant intellectual property rights (“IPR”) to an SSO prior to the adoption of a standard, a “patent holder is in a position to ‘hold up’ industry participants from implementing the standard. Industry participants who have invested significant resources developing products and technologies that conform to the standard will find it prohibitively expensive to abandon their investment and switch to another standard.” In order to avoid “patent hold-up,” many SSOs require participants to disclose and/or give up IPR covering a standard. The case turned on four issues: (1) Existence of Disclosure Duty: Did Qualcomm, as a participant in the JVT, have a duty to disclose patents to the JVT prior to the release of the H.264 standard in May 2003; (2) Scope of Disclosure Duty: If so, what was the scope of its disclosure duty; (3) Breach: Did Qualcomm breach its disclosure duty by failing to disclose the ’104 and ’767 Patents; and (4) Remedy: If so, was it within the district court’s equitable authority to enter an unenforceability remedy based on the equitable defense of waiver in the SSO context? LOF: The existence of a disclosure duty is a legal question with factual underpinnings. The Federal Circuit agreed that Qualcom had a duty. As to the scope of that duty, the Federal Circuit also agreed that JVT participants only had to disclose patents that “reasonably might be necessary” to practice the H.264 standard. The Federal Circuit also agreed that Qualcom had violated this standard, but disagreed that as a result the patents should be completely unenforceable. Instead, the Federal Circuit limited the unenforceability to all current and future H.264-compliant products.