## Facts

- Ericsson owned patents declared essential to the IEEE 802.11(n) Wi‑Fi standard and promised to license them on reasonable and nondiscriminatory (RAND) terms.
- D‑Link, Netgear, Acer, Gateway, Dell, and Toshiba sold Wi‑Fi‑enabled products, many using Intel Wi‑Fi chips; Intel intervened.
- Ericsson sued for infringement of several asserted patents in the Eastern District of Texas.
- A jury found infringement of three asserted patents by certain accused products, found the asserted claims not invalid (including the ’625 patent), and awarded about $10 million in reasonable‑royalty damages (roughly $0.15 per device).
- The district court denied post‑trial motions, left the liability findings intact, and set an ongoing royalty.
- Defendants and Intel appealed, challenging infringement/validity, licensing/RAND issues, and the damages methodology and jury instructions for RAND-encumbered standard-essential patents (SEPs).

## Issues

1. Whether substantial evidence supported the jury’s infringement findings for the asserted claims, and whether any findings required reversal under the claim language.
2. Whether substantial evidence supported the jury’s determination that the ’625 patent was not anticipated/invalid.
3. Whether the reasonable‑royalty and ongoing‑royalty determinations for RAND‑encumbered SEPs were legally sound, including whether the jury instructions properly addressed apportionment, standardization value, and the relevance of Georgia-Pacific factors.
4. Whether instructions on patent hold‑up and royalty stacking were required absent case-specific evidentiary support.

## Decision

- Affirmed in part the infringement findings and affirmed that the ’625 patent was not invalid.
- Reversed at least one infringement finding where the accused products did not satisfy claim language requiring a transmitter to command a receiver to both receive a packet and release any expectation of receiving outstanding packets.
- Held substantial evidence supported a finding of induced infringement of a method claim.
- Vacated the reasonable‑royalty damages award and vacated the ongoing royalty.
- Remanded for a new damages determination with revised, case-specific jury instructions consistent with RAND-SEP damages principles.

## Legal Principles

- RAND commitments do not impose a uniform, special-purpose damages framework; damages instructions must be limited to factors relevant to the record in the particular case.
- In RAND-SEP cases, courts must prevent a royalty from capturing value attributable only to inclusion in the standard; the royalty must reflect the incremental value of the patented technology itself.
- Georgia-Pacific factors cannot be recited wholesale in RAND-SEP cases; many factors may be irrelevant or misleading when a RAND obligation is present, and instructions must be tailored accordingly.
- Instructions on patent hold‑up and royalty stacking are not required based on general concerns; an accused infringer must produce case-specific evidence tying hold‑up or stacking to the RAND commitment, the asserted patents, and the relevant standard technology.
- Entire market value rule concerns require caution when referencing end-product prices; comparable licenses may be strong evidence of a RAND royalty when they are sufficiently comparable and the rate structure effectively accounts for apportionment.

## Conclusion

The Federal Circuit upheld key liability determinations but ordered a new damages trial because the jury was instructed with an untailored Georgia-Pacific framework and insufficient guidance to exclude value derived from standard adoption; it also held that hold‑up and stacking instructions depend on concrete, case-specific proof rather than generalized policy concerns.


Ericsson, Inc. v. D-Link Sys., Inc., 773 F.3d 1201 (Fed. Cir. 2014)