“Standard-documentation becomes an extremely critical source of prior art for wireless SEPs and has to be reviewed comprehensively to ascertain/ challenge the SEP’s validity.”
Technical standards play a pivotal role in our lives. Wireless standards such as 5G are revolutionizing the mobile industry with unprecedented user experience for both voice and data. Additionally, these standards are also making a major impact on the future of diverse industries: automobile, healthcare, smart homes, smart cities, smart grids, smart manufacturing and AR/ VR, to name just a few.
When it comes to the intellectual property rights on the technologies used to develop such standards, one often hears the term “standard essential patents”. Simply put, standard essential patents (SEPs) are patents which claim technologies that are necessary and unavoidable for the implementation of a standard. Licensing of SEPs is typically based on FRAND (Fair, Reasonable, And Non-Discriminatory) terms.
The Prior Art Perspective
Not all granted patents are valid over prior art. During the prosecution of a filed patent application, the Examiner at the patent office does search for and review prior art that is relevant to the filed claims as defined by the governing statutes in that jurisdiction. However, due to a variety of reasons (difficult-to-access sources, Examiner workloads), the prior art search during prosecution may not be comprehensive.
As such, confirming the validity of an SEP’s claims over prior art becomes extremely important. Statutes for prior art vary from one jurisdiction to another. However, across all jurisdictions, the question “Are the claims of the patent valid over prior art?” becomes as important as “Are the claims of the patent reading on the standard?”.
Standard-Documentation as Prior Art and Related Challenges
In this regard, standard-documentation from online sources maintained by standard setting organizations (SSOs) is usually an important source of relevant prior art. Such prior art can include technical specifications, technical reports, change requests, liasioning statements, work item descriptions, study documents, recommendations and RFCs.
However, accessing this documentation available in SSO websites is often not easy. Some of the challenges which prior art researchers face are mentioned below:
- Unlike patent data, standard-documentation is either unstructured or semi-structured data. The extent of structure varies from one SSO to another and also from one document type to another within a given SSO. For example, recommendations of ITU-T are in a relatively structured form as compared to ITU-T’s technical reports and papers. IEEE’s study documents, on the other hand, are in a highly unstructured form. This is in stark contrast to patent data, which is available to the prior art researcher in highly structured form, with well-defined fields such as abstract, claims, background, citations and various date-related fields
- The interfaces for accessing standard-documentation vary from one SSO to another
- Overall, the search interfaces on SSO websites have not been designed for a structured prior art search
Determining the Significance of Standard-Documentation as Prior Art for SEPs
Review of prior art within patent publication data can be more structured and efficient but cannot compensate for review of standard-documentation. The above may be stating the obvious but it needs to be called out. In fact, an SSO member will not necessarily file patent applications on every contribution or change request which it submits towards the development of a standard. Such content, therefore, will not be found in patent data. Bear in mind also that the published patent data at any point in time is not recent due to the inherent delay in publication from the time of filing, which can be 18 months or more. As such, during prosecution of a potential SEP, the standard-documentation may turn out to be a “fresher” source of prior art as compared to patent data, but may not be comprehensively reviewed by the Examiner.
Below, we examine the significance of standard-documentation as prior art against standard essential patents (SEPs) for wireless communication standards such as 4G, 5G and IEEE 802.11 standards. We have used statistical analysis on a sample set of European Patent Office (EPO) oppositions on SEPs to review the impact of standard-documentation. We also address the relevance of documentation from other standard setting organizations (other than that to which the SEP relates) as prior art for SEPs by using Wi-Fi 7 (IEEE 802.11be) as an example and analyzing its contribution data to this effect.
What Impact Does Standard-Documentation Have on SEPs in Post-Grant Proceedings?
To answer this question, we conducted a statistical study on oppositions filed in Europe on patents related to wireless communication technologies. The key findings are described below.
Approach to Analysis
- For our study, we selected a sample set of 60 opposition cases which were filed at the EPO and met the following criteria:
- Subject patents were related to wireless standards (primarily, 3GPP and IEEE standards)
- Opposition procedure was closed/ completed
- Subject patent was revoked (26 cases) OR subject patent’s independent claim was amended (34 cases)
- On each of these 60 cases, we determined whether the opposition division had cited standard- documentation as prior art to amend independent claims/ revoke the subject patent
- If yes, was the standard-documentation cited as prior art pursuant to Article 54? Or, was all standard-documentation cited as prior art pursuant to Article 56 of EPC?
- For the 26 “Revoked” cases:
- In 13 revoked cases, the cited standard related documentation was confirmed by the opposition division as prior art challenging the validity of the independent claims (in 9 cases pursuant to article 54 and in 4 cases pursuant to article 56). The cited standard-documentation directly contributed to the final outcome of the subject patents being revoked
- Within the remaining 13 revoked cases, there were only two cases in which the opposition division relied on prior art other than standard-documentation, as grounds for revoking the patent (patent prior art in one case and a non-patent literature not related to standards in another case). The remaining 11 cases were instances of the subject patent being revoked on grounds not related to prior art. Examples of such grounds include EPC article 100 (b) (“patent does not disclose the invention in a manner sufficiently clear and complete …”) and article 100 (c) (“subject-matter of the European patent extends beyond the content of the application as filed, …”)
- For the 34 “Amended” cases:
- In 15 amended cases, the cited standard-documentation was confirmed by the opposition division as prior art challenging the validity of the independent claims (in 11 cases pursuant to article 54 and in 4 cases pursuant to article 56). The cited standard-documentation directly contributed to the final outcome of the claims being amended
- Within the remaining 19 ‘amended’ cases, there were only three cases in which the claims were amended to overcome patent publication prior art. The remaining 16 cases were instances of the claims being amended to overcome rejection grounds not related to prior art such as EPC article 100 (b) and article 100 (c)
The analysis shows a strong indication of standard-documentation being majorly relied upon when challenging the validity of granted SEPs for wireless standards at the EPO. In other words, standard-documentation may not have been comprehensively reviewed during the prosecution of the subject patents by the assignees as well as by the Examiners. This observation can be extrapolated to suggest that standard-documentation becomes an extremely critical source of prior art for wireless SEPs and has to be reviewed comprehensively to ascertain/ challenge the SEP’s validity.
Can Standard-Documentation from Other SSOs Also Be of Relevance?
To address this, we conducted a broad level analysis on the contributions for Wi-Fi 7 (IEEE 802.11be) and their citations. The IEEE 802.11be amendment is currently under development and is expected to be released in 2024.
Approach to Analysis
IEEE Mentor web page provides access to a wealth of documentation which is classified based on IEEE’s working groups. Within this data, the study documents constitute the primary documentation pertaining to technical contributions made towards the development of standards in each working group.
As such, for the purpose of our analysis, we have retrieved all study documents published till end of 2022 under the task group, topic interest group and study group relevant to Wi-Fi 7 (TGbe and EHT TIG/SG [inactive]). Further, we have retrieved and normalized the citations data for this Wi-Fi 7 study document dataset (documents cited by each study document).
- After de-duplication (multiple versions of the same document), 1,343 study documents relevant to Wi-Fi 7 were retrieved
- Within this dataset, 1,634 unique documents have been cited
- In all, these 1,634 documents were cited a total of 5,324 times within the dataset
- The SSO distribution of the 1,634 cited documents was as follows:
22% of the unique cited documents came from 3GPP which had been cited by 153 Wi-Fi 7 study documents (11% of the total dataset of study documents). This indicates a strong correlation of the Wi-Fi 7 technologies with those in 3GPP and does not come as a surprise since a number of physical and MAC layer technologies, which will be pivotal in enabling performance enhancements of Wi-Fi 7 over previous versions, have already been explored or incorporated in 3GPP standards. Our dataset also confirmed that the 153 study documents citing 3GPP documents were primarily discussing technologies such as MU-MIMO, QAM and link adaptation and retransmission protocols such as HARQ, which overlap with the work done in 3GPP. In general, it will be fair to say that there will be an overlap of technologies being deployed across multiple wireless standards since the basic building blocks of communication will apply to all standards and the choice of technologies for such building blocks will be aligned to the state-of-the-art at the time of standard development.
In terms of prior art, this strongly suggests that validity-challenging prior art can come from any standard’s documentation and is not confined to the standard to which the subject SEP pertains.
Call to Action
In conclusion, we want to emphasize that documentation from SSO sources is a relatively untapped commodity for prior art research on SEPs, particularly in the prosecution stage. If used well, this can go a long way in helping patent assignees to create stronger SEP portfolios and avoid nasty surprises at a later point of time. This can also help parties involved in licensing, litigations, oppositions, inter partes reviews and acquisitions to comprehensively ascertain/ challenge the validity of asserted SEPs or SEPs of interest. The future of SEP licensing and litigation awaits!
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