Wisconsin court orders Apple pay $506M for infringing on WARF patent
A U.S. district court judge on Monday ruled Apple must pay $506 million in damages for infringing on a microprocessor technology IP owned by the University of Wisconsin-Madison's patent licensing body, adding $272 million to an initial $234 decision reached almost two years ago.
The fine levied by U.S. District Judge William Conley more than doubles damages imposed on Apple by a federal jury in October 2015, reports Reuters.
Apple's A-series CPUs, specifically the A7, A8 and A8X system-on-chip designs, were found to have infringed on a 1998 computer microarchitecture patent owned by the Wisconsin Alumni Research Foundation. The university's patent licensing arm initially sought $400 million from the tech giant.
Judge Conley in his determination said WARF is owed additional damages plus interest because Apple continued to use the patented technology without license until the IP expired in December 2016, the report said.
WARF first sued Apple in 2014 over alleged infringement of U.S. Patent No. U.S. 5,781,752 for a "Table based data speculation circuit for parallel processing computer." According to WARF and original patent claims, the IP provides a novel method of improving power efficiency and performance in modern computer processor designs using "predictor circuit" technology.
The university leveraged the same patent to force Intel into a settlement in 2008.
The original complaint against Apple claimed willful infringement, noting the company cited the '752 patent property in its own U.S. Patent and Trademark Office filings. Further, WARF claimed Apple refused requests to legally license the IP. The university branch later filed a separate lawsuit asserting the same patent against Apple's more recent A9 and A9X chips.
For its part, Apple denied infringement during court proceedings. The company also sought to mark the IP as invalid, and requested a PTO review of its validity, but the patent body declined to take such action.
Apple is appealing the 2015 jury verdict and subsequent damages finding. Conley will not hand down a ruling on the second WARF case against Apple until the company completes the appeals process, the report said.
The fine levied by U.S. District Judge William Conley more than doubles damages imposed on Apple by a federal jury in October 2015, reports Reuters.
Apple's A-series CPUs, specifically the A7, A8 and A8X system-on-chip designs, were found to have infringed on a 1998 computer microarchitecture patent owned by the Wisconsin Alumni Research Foundation. The university's patent licensing arm initially sought $400 million from the tech giant.
Judge Conley in his determination said WARF is owed additional damages plus interest because Apple continued to use the patented technology without license until the IP expired in December 2016, the report said.
WARF first sued Apple in 2014 over alleged infringement of U.S. Patent No. U.S. 5,781,752 for a "Table based data speculation circuit for parallel processing computer." According to WARF and original patent claims, the IP provides a novel method of improving power efficiency and performance in modern computer processor designs using "predictor circuit" technology.
The university leveraged the same patent to force Intel into a settlement in 2008.
The original complaint against Apple claimed willful infringement, noting the company cited the '752 patent property in its own U.S. Patent and Trademark Office filings. Further, WARF claimed Apple refused requests to legally license the IP. The university branch later filed a separate lawsuit asserting the same patent against Apple's more recent A9 and A9X chips.
For its part, Apple denied infringement during court proceedings. The company also sought to mark the IP as invalid, and requested a PTO review of its validity, but the patent body declined to take such action.
Apple is appealing the 2015 jury verdict and subsequent damages finding. Conley will not hand down a ruling on the second WARF case against Apple until the company completes the appeals process, the report said.
Comments
The same patent laws that applies to everyone else with Apple's IP applies to Apple with everyone else's IP. It is amazing: the same people who want Android banned despite a decades'-old Supreme Court ruling allowing one company to copy another company's UX/UI, a ruling that Apple has since taken advantage of themselves like everyone else. The same people who insist that Apple should have to pay pretty much pennies for critical hardware patents like ARM CPU designs and 2G/3G/4G designs without which smartphones and mobile tech in general wouldn't be practical AT ALL agreed with Apple's attempts to ban all Samsung products from the market - or pay a $50 per device licensing fee - over trade dress, rounded corners, icon shapes, home buttons and pinch-to-zoom.
It is hilarious. How many people wanted Oracle to drive Android off the market over APIs that Sun allowed EVERYONE to freely use at the time - and which Google could have easily rewritten if they didn't - do not want Apple to pay practically anything over ARM designs and wireless standards?
Here is the deal: Apple chose Wisconsin's designs over ARM Holdings' design. Qualcomm, Samsung, MediaTek and everyone else pay ARM Holdings, Inc. because the Snapdragon, Exynos etc. are based on the ARM Holdings base design. (In fact, Qualcomm had overheating issues with the Snapdragon 810 because they used an ARM Holdings design for the cores. When they used their own design that was derived from the ARM Holdings base design for the 820 the problem went away.) So your rationale for why Samsung and Qualcomm have to pay ARM Holdings but Apple doesn't have to pay the University of Wisconsin is what exactly?
Finally, you mention that it was a Wisconsin court, as if that is all nefarious or something. The problem is that this actually HELPS the University's case. Why? Because were UW-Madison some troll filing a flimsy case, they would have filed the lawsuit in East Texas like all the actual trolls do. Instead of court-shopping, the University of Wisconsin actually filed their case in the appropriate jurisdiction: where they are located. Why? Because they knew that they would win based on the merits of the case. And this is why UW-Madison has won every appeal on this case.
Apple will ride this out because it is cheaper to pay lawyers - who work for Apple and are on the payroll already for the most part - than it is to pay $1 billion. But they will pay eventually, just as Samsung paid Apple over rounded corners and icon placement eventually.
1. Apple incorporated the University of Wisconsin's designs in their own designs.
2. The University of Wisconsin's designs are not not an open standard that can be used on CDDL, LGPL, Mozilla 2.0, Apache 2.0, BSD2, BSD3 or any of the other FOSS terms. We agree on that too right?
3. Which means that if Apple was going to use the University of Wisconsin's IP in their designs they were going to have to pay the University of Wisconsin.
If you want to use someone else's tech, or your own tech that is derived from someone else's tech, you have to pay the someone else for it unless the someone else gives it away. Apple doesn't have a leg to stand on, and the only reason why you disagree is because this is Apple and not Samsung, Google, Qualcomm or Microsoft we are talking about here. If you disagree, please name for me all of the Apple IP that Samsung, Google and everyone else should get to use for free. And don't be coy. Don't claim that Google should have to pay for Android. They don't because the Supreme Court said otherwise almost 25 years ago. And Samsung has long paid Apple over mostly cosmetic "your product looks too much like mine" issues - not over things that the product fundamentally needs to work in the first place - so that dog won't hunt either.
Apple's only counterargument: we changed the original design, it became our design when we changed it so we don't have to pay for it anymore. Never mind that this argument has been shot down millions of times already. But if that is what you support then hey, I have an idea. Google is looking to design their custom chip for the next-gen smartphones, tablets and PCs that they are going to release running their Fuschia OS that they will launch in 2019 or 2020. (It will run Android and Chrome OS apps, but otherwise be entirely different from both, including not having a Linux kernel.) Here's an idea: how about they just use the A11 SOC? They could tweak it to accommodate the fact that Fuschia isn't a UNIX-like Darwin/BSD derivative and optimize it for the the Java JVM and their own Dart language instead of what Apple has done for Swift and Objective C and be off to the races, right? How many of you would be in favor of their doing that? While. Not. Paying. Apple. A. Dime. In. The. Process.?
Exactly. I say that if Apple shouldn't have to pay UW-Madison for their old Ax designs, Google shouldn't have to pay Apple if they take the A11 and tweak it for their Android replacement. Agree? Disagree?
1) Apple incorporated UW designs: Maybe, maybe not. This decision said yes, an appeals court may say otherwise.
2) UW designs are not open standards: No kidding. First, there is no single definition of what makes an open standard, and second, they would usually have to be developed by consensus and due process among the stakeholders. UW tends to hold their IP very closely and manage it (license or sell) zealously. Did Apple claim they were open?
3) Apple would thus have to pay UW: Does not follow if Apple can show that they did not actually infringe or that the patents or certain claims are invalid.
"Apple's only counterargument...we changed design": No (and never underestimate the creativity of an IP attorney--all those EE degrees have to find an outlet). Simply changing a design that is based on someone else's IP doesn't get you a new patent or protect you from infringement. If UW built a bicycle --a unique frame, seat, handlebars, two wheels, crank and chain--someone else can't get a new patent simply by adding a v-belt instead of a chain to that design, for instance. If you build it using ideas in someone else's claims, you need their permission (license, assignment, etc.).
"I say that if Apple shouldn't have to pay UW...": First, your assumption is that this judgement will stand. It's a long way to the end of the race. Second, Google could always just make the chip without IP protection, but if they were to make a patent application, they would have to show the ARM/Apple patents as prior art and then show how they don't infringe, and also because Bicycle Patent example above, and further because one infringement case will usually have almost nothing to do with another in terms of precedent.
Best guess: the parties will fight this for two more years and then settle out of court, for terms that will never be disclosed. Both sides claim victory, the world goes on.
Toss-up question for the class: Is UW being a patent troll, since they are a non-practicing entity? Or if UW assigns the patent to the U Professorial Retirement Fund IT department (UPROFIT) to help maintain retirees benefits and pensions, would that group be a patent troll if they try to license the patent? See, this stuff is not so easy out in the real world.