Apple wants 'tainted' $506M PanOptis verdict tossed over unfair jury form
Apple has demanded a new trial to correct what it considers is a "tainted' $506M verdict in its 4G LTE patent lawsuit with PanOptis, claiming there to be an issue with the verdict form used by the jury.
In August 2020, a Texas federal jury ruled that Apple had to pay $506.2 million to PanOptis for apparent willful infringement of 4G LTE patents. Following February's final judgment backing on the verdict, Apple is trying to nullify the decision by saying the original trial had a flawed element.
In a motion to the U.S. District Court for the Eastern District of Texas on Thursday, Apple states its disagreement stems from the verdict form, which it feels lumped too many of PanOptis' claims into just one question, according to Law360. The form asked jurors to decide whether or not plaintiffs PanOptis "prove[d] by a preponderance of the evidence that Apple infringed any of the asserted claims."
It is alleged that the framing of the question bundled together "nine claims from five patents into one question," which makes it "impossible to know" which of PanOptis' claims the jury agreed with in its response.
Apple's motion included a second sealed motion that laid out its argument, and that "no reasonable jury could have found that the asserted patent claims were infringed." If presiding Judge Gilstrap were to grant any element of that sealed motion, Apple insists the whole verdict must be thrown out in favor of a new trial.
Both Apple and PanOptis disagreed over the verdict form, with the latter arguing that simplifying it "is a virtue." Apple asserted in the motion "when a verdict is tainted by that kind of uncertainty, the general-verdict rule requires setting the verdict aside and conducting a new trial."
The iPhone maker also argued that the doctrine of equivalents didn't apply in the infringement case. The doctrine enables a court to determine infringement of a patent, including in cases where devices or processes do not fall into the literal scope of a patent claim.
While Gilstrap considers the possibility of a new trial based on Apple's motion, the existing verdict of $506.2 million may yet change in PanOptis' favor. As many findings of the case are still under seal, it is unknown if PanOptis asked for an increase in its award, which could triple in size due to the ruling finding Apple's infringement to be willful.
The Thursday motion also included an update from PanOptis on pre-judgment and post-judgment interest it is owed based on the verdict. They were said to be $25.7 million and $28,560 respectively.
In August 2020, a Texas federal jury ruled that Apple had to pay $506.2 million to PanOptis for apparent willful infringement of 4G LTE patents. Following February's final judgment backing on the verdict, Apple is trying to nullify the decision by saying the original trial had a flawed element.
In a motion to the U.S. District Court for the Eastern District of Texas on Thursday, Apple states its disagreement stems from the verdict form, which it feels lumped too many of PanOptis' claims into just one question, according to Law360. The form asked jurors to decide whether or not plaintiffs PanOptis "prove[d] by a preponderance of the evidence that Apple infringed any of the asserted claims."
It is alleged that the framing of the question bundled together "nine claims from five patents into one question," which makes it "impossible to know" which of PanOptis' claims the jury agreed with in its response.
Apple's motion included a second sealed motion that laid out its argument, and that "no reasonable jury could have found that the asserted patent claims were infringed." If presiding Judge Gilstrap were to grant any element of that sealed motion, Apple insists the whole verdict must be thrown out in favor of a new trial.
Both Apple and PanOptis disagreed over the verdict form, with the latter arguing that simplifying it "is a virtue." Apple asserted in the motion "when a verdict is tainted by that kind of uncertainty, the general-verdict rule requires setting the verdict aside and conducting a new trial."
The iPhone maker also argued that the doctrine of equivalents didn't apply in the infringement case. The doctrine enables a court to determine infringement of a patent, including in cases where devices or processes do not fall into the literal scope of a patent claim.
While Gilstrap considers the possibility of a new trial based on Apple's motion, the existing verdict of $506.2 million may yet change in PanOptis' favor. As many findings of the case are still under seal, it is unknown if PanOptis asked for an increase in its award, which could triple in size due to the ruling finding Apple's infringement to be willful.
The Thursday motion also included an update from PanOptis on pre-judgment and post-judgment interest it is owed based on the verdict. They were said to be $25.7 million and $28,560 respectively.
Comments
Defendants are sometimes successful in having particular claims deemed invalid - e.g., by the PTAB or by the Federal Circuit on appeal of a PTAB decision or appeal of an infringement decision. They also sometimes get infringement decisions themselves overturned with regard to particular claims. If the jury just found that at least one claim was infringed (without deciding and indicating which claims were infringed), and one of the claims is latter invalidated... then you might need a new trial to determine whether one of the remaining claims was infringed. We don't know whether the jury's infringement finding was based solely on that claim. We also don't know whether the damages award depended in part on that claim.
EDIT: Found that the procedural question whether the Federal Court of Appeals could consider was already put to SCOTUS
https://www.supremecourt.gov/DocketPDF/18/18-1397/98180/20190501124836955_Prism Technologies Petition.pdf
As for your question: Once an infringement judgment becomes final, it likely wouldn't matter that an infringed claim was found to be invalid - e.g., by the PTAB or in a different infringement action. I wasn't referring to such a situation. Sometimes a claim is effectively invalidated before there's a final judgment in a given infringement action. On appeal, the Federal Circuit can overrule a trial court's decision that a given claim isn't invalid which effectively moots the finding of infringement of that claim. The PTAB can also invalidate a given claim and the Federal Circuit can uphold the PTAB's invalidation. Those things can happen before an infringement judgment becomes final.
There's still some gray relating to this legal issue. But in broad strokes, if an invalidation becomes final before an infringement finding becomes final, courts can give effect to that invalidation and effectively throw out the infringement finding. Sometimes it takes a long time for infringement cases to become final. They can go back and forth between the Federal Circuit and district courts for many years. This has been an issue with the VIrnetX and Apple litigation. Apple generally wanted to drag those cases out so that invalidations became final before the infringement findings did. VirnetX generally wanted the reverse. It's still a question which will happen first when it comes to one of the cases.
With the present case, the Federal Circuit could effectively decide that some - but not all - of the asserted patent claims are invalid. If it does, then they'll probably need to be a new trial on infringement because we won't know whether the jury's infringement finding was based only on those claims. It might be worth noting that the jury was asked to rule on each claim separately when it came to validity. But when it came to infringement, it was only asked to rule whether any of the claims were infringed.
Now that I've looked at the verdict form in this case more carefully, I'd say that it's particularly problematic. It doesn't seem to account for the possibility that the jury found infringement on the first question but then invalidity of some (but not all) of the claims on the second. What would have happened then? The verdict form doesn't ask the jury to indicate whether the infringement finding was based on at least one claim that wasn't found to be invalid.
There was also a question at an earlier stage of the Sprint case regarding, in effect, the finality of the Sprint decision. Prism effectively argued that it was too late to set aside the judgment against Sprint because the Federal Circuit had issued a mandate in that case before it decided in the T-Mobile case that the patent claims were invalid. (Sprint hadn't yet petitioned the Supreme Court.) The Federal Circuit disagreed. In other words, the Sprint judgment wasn't sufficiently finalized, when the T-Mobile decision was issued, so as to preclude the Sprint judgment being set aside based on the T-Mobile decision.
Prism also raised the issue of Sprint having previously stipulated that it wouldn't argue invalidity as a defense against the infringement claims. The Federal Circuit said, in effect, that that didn't matter.
So the question wasn't whether effect could be given to invalidation decisions which happened before the present case (i.e. Prism v Sprint) was finalized. The questions were (1) whether the present case had been finalized and (2) whether the claims in question had actually been invalidated.
The two questions which Prism posed in its petition for cert with the Supreme Court related to the two issues I described in the first two paragraphs.