• TruePosition Inc. v. Andrew Corp. - District Court Weighs in on Standard-Setting Organization Activity, ETSI IPR Policy, Equity, and Permanent Injunctions
  • August 26, 2008 | Authors: Daniel Scott Leventhal; Richard S. Zembek
  • Law Firm: Fulbright & Jaworski L.L.P. - Houston Office
  • Defendants are increasingly raising defenses and claims tied to the intellectual property rights ("IPR") policies of standard-setting organizations ("SSO") when an SSO participant sues for patent infringement related to standard defined functionality. There is relatively little case law addressing such defenses and claims. However, the District Court for the District of Delaware recently addressed defenses tied to the IPR policy of a predominant SSO - the European Telecommunications Standards Institute ("ETSI"). While ultimately rejecting the defendant's SSO-related defenses, the court interpreted the scope of the patent disclosure requirement imposed by the ETSI IPR policy to be broader than what the patent owner advocated and confirmed that the patent owner's failure to disclose a patent when required by an SSO policy can be misleading conduct regarding its intent to later assert the patent. The court also addressed issues related to permanent injunctions.