RAND Obligation Extends to Claims Containing Non-Essential Elements

Following a bench trial regarding the impact of RAND obligations on plaintiff's potential damages for infringement of its wireless network patents, the court found that fifteen categories of claims were all standard-essential. "[Plaintiff] contends that having elements requiring the use of a processor, a hand-held terminal, and a keyboard, respectively, makes each of these claims non-standard-essential because the 802.11 standard does not require those elements. . . . Defendants contend that the RAND requirement would be reduced to nothing if a patentee who has agreed to a RAND obligation could get around it merely by adding an additional element like 'utilizing a processor' to an otherwise standard-essential claim. That concern is particularly great where the additional element is technology as basic as 'a processor' or 'a keyboard.'. . . A patentee should not be able to sue the large number of users of these basic elements who are otherwise implementing standard-essential independent claims without being subject to the RAND obligation applicable to the standard-essential independent claims. . . . A claim element directed at any type of conventional device to perform the necessary computing functions is therefore still standard-essential."

Innovatio IP Ventures, LLC, Patent Litigation, 1-11-cv-09308 (ILND July 26, 2013, Order) (Holderman, J.).