Judge Burke issued an interesting R&R on Tuesday that highlights the dangers of pleading that a patent is standards essential.
In Koninklijke KPN NV v. Coolpad Technologies Inc., C.A. No 21-43-LPS-CJB, D.I. 55 (D. Del. Jan 11, 2022), the plaintiff ("KPN") alleged that the defendant infringed a patent that it had previously asserted against different defendants in the District. In one of those earlier cases, the defendant had counterclaimed for breach of FRAND obligations and KPN had responded by admitting that "One or more claims of the [asserted patent] and [patents not asserted against Coolpad] have been recognized as essential to one or more 3GPP standards." 3G Licensing, SA v. LG Electronics, Inc. C.A. No. 17-85-LPS, D.I. 19 (D. Del. June 2, 2017), ¶ 19.
So, Coolpad brought its own FRAND counterclaim, alleging in support only the admission from the 3G case and several other unidentified instances where KPN "claimed that the Asserted Patent is an essential patent." KPN, moved to dismiss this counterclaim, alleging that these allegations were insufficient to state a claim.
Judge Burke denied the motion, stating:
Although at the case dispositive stage Defendant will need to prove essentiality by way of objective findings (i.e., whether practicing the relevant standards in fact leads to infringement of the patent) . . . at the pleading stage it need only point to facts that render it plausible that the patent is essential. And the Court does not see why Plaintiff's alleged repeated statements that it "belie[ved]" that the patent "may be" essential, or that the patent "is an essential patent" or that the patent "ha[s] been recognized as essential" cannot fit that bill
Koninklijke KPN NV v. Coolpad Technologies Inc., C.A. No 21-43-LPS-CJB, D.I. 55 (D. Del. Jan 11, 2022).
Of course, only time will tell if ...