Encoder claims and standard essentiality: why categorical exclusions miss the mark

The recent wave of video coding patent disputes, including the litigation between InterDigital and Disney, has brought a critical, highly practical question back into the spotlight. Can patent claims directed at the encoder side of a codec truly be considered standard-essential, even if the encoder itself lacks normative specification, provided the claims govern the generation of a standard-compliant bitstream?

The UPC LD Mannheim answered this question in the negative in its decision of June 16, 2026 (UPC LD Mannheim, UPC_CFI_86-2025, InterDigital v Disney) with reference to a statement by the co-chairs of the JVT (Joint Video Team), the group responsible for standardizing H.265/HEVC's predecessor standard, H.264/AVC. It seems that the UPC's conclusion might be based on a misinterpretation of the statement by the JVT co-chairs, as well as a misunderstanding of the technical nuances of codec standardisation.

The question whether encoder claims can be considered standard-essential is not merely an academic debate. The answer carries profound implications for the FRAND encumbrance of encoder claims and dictates how these claims are pooled and licensed to major video streaming platforms.

Ultimately, the core issue is not whether the term "encoder" is written into the claim, but whether a party can technically comply with the standard's normative requirements without infringing it.

The technical reality: interoperability over implementation 

To understand the landscape, we must look at the fundamental asymmetry inherent in modern audio and video coding standards. Standards must strictly define the coded representation and the decoding process to guarantee interoperability. Without this, a decoder from one manufacturer would fail to process a bitstream generated by another. 

Consequently, standards like HEVC meticulously dictate bitstream syntax, semantics, and conformance requirements. The H.265 specification, for instance, details the Hypothetical Reference Decoder (HRD) to verify bitstream compliance, mandates that conforming decoders process compliant bitstreams, and strictly distinguishes normative requirements from informative notes. 

The standardised syntax is the very lifeblood that distinguishes one codec from another. Crucially, the fact that an encoder does not have to utilise every available syntax element in every coding scenario does not automatically strip the related patent claims of their essentiality. 

The legal framework: ITU-T, ETSI, and IEEE perspectives 

When we examine the relevant Intellectual Property Rights (IPR) policies, it becomes clear that they do not categorically separate encoder claims from decoder claims. For video codecs like H.265/HEVC, the ITU-T Common Patent Policy governs the analysis.  

Under this framework, the operative question is functional: does the claimed subject-matter form part of implementing the Recommendation? If a claim relates to a syntax element or bitstream mechanism foundational to the standard's distinctive technical architecture, it does not lose its essential nature simply because an encoder might bypass that element in certain specific sequences.  

The ITU-T licensing declaration targets "implementations" of the relevant Recommendation, anchoring the licensing commitment to technical substance rather than the drafting perspective of the patent claim. 

Optionality might impact valuation or the gathering of infringement evidence, but it should not serve as an automatic barrier to essentiality where the claim maps to a syntax feature the standard defines. 

Other SSOs reinforce this functional approach. ETSI's IPR Policy explicitly defines essentiality based on whether it is technically possible, ignoring commercial grounds or state-of-the-art practices at the time of standardisation, to make, sell, or operate compliant equipment without infringing the IPR. 

The IEEE similarly links essentiality to the technical necessity of using a claim to create a compliant implementation of either mandatory or optional normative portions of a standard. This critical inclusion of "optional normative" features confirms that an encoder-side drafting perspective does not alter the fundamental essentiality of a claim mapping to a standard's technical architecture.  

The case for essentiality: syntax claims in disguise 

The most compelling argument for recognising certain encoder claims as SEPs focuses squarely on the bitstream. At its heart, a video coding standard operates as a strict grammar for valid information. If an encoder claim dictates the generation of a characterising syntax element, signalling structure, or parameter set specified by the standard, labelling it merely as an "encoder claim" is misleading. In reality, the claim may represent the sole technically viable method for producing that specific standardised bitstream feature.  

This is highly plausible when a claim involves the act of embedding standardised syntax elements and information included therein into the bitstream in a mandated structure, rather than the mere selection of an efficient mode. If a claim is directed to generating a characteristic syntax feature as standardised, it can be essential for that normative part of the standard, even if the standard lacks a step-by-step "encoder chapter" prescribing the claim. 

Since new codecs distinguish themselves through new coded languages and characteristic syntax elements (for HEVC, for example, CTU architecture that AVC did not have), stripping these elements of their essential status simply because they are occasionally optional and not used in every coding situation would be an overly rigid approach that improperly conflates proof of use with essentiality. Notably, the mere reference to the standard specification does not sufficiently show fulfilment of a specific claim feature mapping to these syntax elements. 

Furthermore, a categorical exclusion of encoder claims would create a dangerous loophole in FRAND policy, allowing patentees to enforce blocking positions against implementers who produce, use or transmit compliant bitstreams, but entirely without the corresponding FRAND licensing obligations. 

The case against essentiality: preserving open encoder design 

However, the counterargument carries significant weight and must not be dismissed. Video coding standards deliberately leave the internal design of the encoder open to market competition. Encoders vary wildly in terms of how they execute prediction searches, optimise rate-distortion, or allocate bits: choices that drastically impact efficiency and user experience but are not normatively prescribed by the standard. 

If a patent merely covers one of these commercial or efficiency optimisations, the fact that the output is standard-compliant does not make the claim an SEP. 

A compliant bitstream can be generated through myriad encoding strategies. Avoiding a patented method might result in lower compression efficiency or increased computational cost, but as ETSI guidelines highlight, commercial unattractiveness does not equal technical impossibility. 

Broadly treating all encoder optimisation patents as SEPs exacerbates the recognised problem of over-declaration. It would improperly allow patents covering non-standardised implementation choices to be pooled, counted, and monetised as unavoidable standard technology, despite actual infringement depending heavily on internal, non-standardised encoder designs that cannot be inferred from bitstream conformance alone. 

A workable framework: syntax vs. optimisation 

To navigate this complex landscape, the industry must rigorously distinguish between "syntax claims" and "optimisation claims". 

A syntax-based encoder claim involves steps that are inseparable from producing, selecting, or signalling a bitstream element defined as part of the standard's characteristic syntax. If the claim, properly construed, covers the generation of this element in the standardised manner, the "encoder" label should not prevent essentiality. This holds true for both mandatory features and optional normative features where the claim is technically necessary to implement them. 

Conversely, an optimisation claim covers methodologies to simply make encoding better, such as faster search algorithms, improved quality, or smarter mode decisions. While highly valuable, these are not standard-essential because technically viable, non-infringing alternatives exist to produce the required conforming bitstream, even if these alternatives are at the cost of efficiency. 

A rigorous, claim-specific practical test should apply: 

• Ask whether the claim maps to a characteristic syntax element or signalling structure defined by the standard. 
• Ask whether the claimed subject-matter is necessary to generate or use that standardised feature as such. 
• Purely commercial, quality, or efficiency disadvantages must be completely excluded from the essentiality analysis. 
• Assess whether bitstream conformity alone is sufficient evidence of use, or if internal encoder evidence is strictly required. 
• Distinguish essentiality from proof of use: a claim may be essential to an optional standard feature even if actual infringement requires evidence that the accused bitstream actually used that feature. 

Implications for patent pools and licensing realities 

This distinction is acutely critical for video distribution patent pools. Pooling syntax-based encoder claims is defensible. If every standard-conforming bitstream of the relevant type necessarily contains the claimed structure, standard conformance strongly supports a presumption of use.

However, for optimisation claims, standard conformance proves nothing about use. A fully compliant video stream could easily be produced by a completely non-infringing encoder. Including large volumes of optimisation claims in a pool based on alleged essentiality is highly problematic; it overstates both the number and value of genuinely essential patents, thereby distorting top-down analyses, comparable licence assessments, and FRAND negotiations. A patent owner should not be able to benefit from a pool-wide presumption of use based solely on the existence of standard-compliant streams.

The path forward 

Categorically excluding encoder-related patent claims from standard essentiality is legally and technically flawed. The ITU-T, ETSI, and IEEE all support a functional approach: essentiality depends on the technical relationship between the claim and the standardised technology, not on an arbitrary encoder or decoder drafting perspective. 

While encoder claims covering avoidable optimisations should never be swept into SEP pools, claims directed at the characteristic syntax elements of a standard must not be denied essential status merely because their use is optional or conditional. The market requires a differentiated approach. By acknowledging essentiality for syntax-based claims while demanding rigorous proof of use and careful royalty allocation for optional elements, the industry can accurately reflect the technical architecture of codecs, honour the true purpose of SSO policies, and strike the critical balance between preventing SEP under-inclusion and curbing SEP overreach.