Biden administration: Apple & Broadcom should quit stalling and pay Caltech $1.1 billion i...
Following Apple and Broadcom's $1.1 billion combined loss in court, the US Solicitor General has asked the Supreme Court to block the pair's attempt to invalidate Caltech's patents at the core of the suit.
Wi-Fi on iPhone
The California Institute of Technology (Caltech) originally sued Apple and Broadcom in 2016, over infringement of multiple Wi-Fi technology patents. Caltech won the case in 2020, with Apple and Broadcom together being ordered to pay $1.1 billion in damages.
Following that defeat, Apple and Broadcom claimed that there had been "multiple legal errors" in the trial, and called for the result to be overturned. In February 2022, the two firms were denied a retrial over the patent infringements, but were granted a new trial to have the $1.1 billion sum reconsidered.
A trial date for that has yet to be determined but, separately, Apple has also been arguing that Caltech's patents are invalid. According to Reuters, the Biden Administration has now backed the 2020 finding, and asked the Supreme Court to dismiss Apple's claims.
US Solicitor General Elizabeth Prelogar said in a court filing that "further review is not warranted," after a lower court ruled against Apple.
"Apple took full advantage of the review process," continues Prelogar, "including by conducting discovery, submitting multiple motions, and -- after the USPTO ruled against it -- unsuccessfully appealing to the Federal Circuit."
The original case centered on Wi-Fi codes that simplify data encoding and decoding, thereby improving the performance of data transmission. During the course of its subsequent appeals -- but not the original trial -- Apple argued that there was "prior art" that rended the patents invalid.
"It is undisputed that, at the time Apple filed its petitions for inter partes review, it was aware of certain additional prior-art combinations that it believed provided a basis for invalidating respondent's patents," writes the US Solicitor General. "But Apple's petitions did not identify these additional prior-art combinations as bases for finding the challenged patent claims invalid."
Referring to the legal terms regarding the presentation of evidence, Prelogar says that "Apple 'reasonably could have raised' these grounds during the instituted reviews."
Apple reportedly says that it "strategically withheld certain arguments" because they largely involved "different permutations" of the prior art that the company did present earlier.
Apple, Broadcom, and Caltech have yet to comment publicly on the US Solicitor General's recommendation.
Read on AppleInsider
Wi-Fi on iPhone
The California Institute of Technology (Caltech) originally sued Apple and Broadcom in 2016, over infringement of multiple Wi-Fi technology patents. Caltech won the case in 2020, with Apple and Broadcom together being ordered to pay $1.1 billion in damages.
Following that defeat, Apple and Broadcom claimed that there had been "multiple legal errors" in the trial, and called for the result to be overturned. In February 2022, the two firms were denied a retrial over the patent infringements, but were granted a new trial to have the $1.1 billion sum reconsidered.
A trial date for that has yet to be determined but, separately, Apple has also been arguing that Caltech's patents are invalid. According to Reuters, the Biden Administration has now backed the 2020 finding, and asked the Supreme Court to dismiss Apple's claims.
US Solicitor General Elizabeth Prelogar said in a court filing that "further review is not warranted," after a lower court ruled against Apple.
"Apple took full advantage of the review process," continues Prelogar, "including by conducting discovery, submitting multiple motions, and -- after the USPTO ruled against it -- unsuccessfully appealing to the Federal Circuit."
The original case centered on Wi-Fi codes that simplify data encoding and decoding, thereby improving the performance of data transmission. During the course of its subsequent appeals -- but not the original trial -- Apple argued that there was "prior art" that rended the patents invalid.
"It is undisputed that, at the time Apple filed its petitions for inter partes review, it was aware of certain additional prior-art combinations that it believed provided a basis for invalidating respondent's patents," writes the US Solicitor General. "But Apple's petitions did not identify these additional prior-art combinations as bases for finding the challenged patent claims invalid."
Referring to the legal terms regarding the presentation of evidence, Prelogar says that "Apple 'reasonably could have raised' these grounds during the instituted reviews."
Apple reportedly says that it "strategically withheld certain arguments" because they largely involved "different permutations" of the prior art that the company did present earlier.
Apple, Broadcom, and Caltech have yet to comment publicly on the US Solicitor General's recommendation.
Read on AppleInsider
Comments
I, for one, don't want patents to exist which violate basic patent law concepts such as prior art.
this is a PRIVATE SECTOR DISPUTE!
Begone, Troll-o-matic.
I might add the upper division (the corpocracy ) actually prefers it this way, so change probably isn’t going to happen.
True, the system is designed for the 18th century, and in those days you had to have something that actually worked, and you had to demonstrate it to the examiners, now, however, someone presents an idea, some drawings and equation. You don’t have to demonstrate an actual working device. You just say here’s the application, here’s the fee give me my patent, and the patent office grants it, and then washes their hands, someday someone will actually build a fusion reactor, one that actually works, and they (the company) will be sued by all the idea, equation people from all over the world.
The Wright brothers went through that process, they built some thing that actually worked on the idea people just had paperwork. Took the Wright brothers years to finally get everything settled and at the end a large number of people in the public, thought they were the bad guys.
That said, I think the SG is wrong and the Federal Circuit's decision in this case should be reviewed. That decision changed how things previously worked and could have broad implications for invalidity defenses in patent infringement suits. And, although there's considerable nuance to the issue, I think the Federal Circuit's decision is inconsistent with a plain reading of the law in question. Apple and Broadcom, and other similarly situated parties, shouldn't be estopped (in infringement cases) from making invalidity arguments which they didn't raise in IPR petitions, even if their failure to raise such arguments at that stage was intentional. That's not what the law requires. It only bars the making of such arguments (in infringement cases) if they were raised (and rejected) or reasonably could have been raised in actual inter parties reviews rather than petitions asking for IPRs.
The Federal Circuit had it right before and, despite this recent Federal Circuit panel's claim, nothing in the Supreme Court's SAS Institute decision required it to change course on its interpretation of the law in question.
Why is the Biden administration even commenting on a case that is in the courts? Bad decision after bad decision. No wonder Biden’s approval is in the low 40%s
What a lying, life-long politician, senile moron. For God’s sake, pick a string Democrat leader to run in 2024
The issue isn't that Apple and Broadcom didn't present prior art evidence at the original trial. The issue is that they weren't allowed to present such evidence and an invalidity argument at the original trial. That's the point of this cert petition to the Supreme Court. The district court judge ruled that they were statutorily estopped from presenting that evidence and making that argument and the Federal Circuit panel upheld that ruling.
As for what other Solicitors General might have concluded on this particular question, I think that's much in doubt. This recent Federal Circuit ruling, which the current SG agreed with, is inconsistent with a plain reading of the law in question. And it isn't consistent with "long-established legal precedent." To the extent a precedent existed on this particular question, that precedent leaned the other way. Indeed, this Federal Circuit panel, by its own admission, overruled that previous (Federal Circuit) precedent in order to get to its decision on the matter in this case. (I'd note that this panel overruling a previous panel's decision on its own, rather than having an en banc Federal Circuit overrule such previous decision, is in itself a questionable action - especially considering that it effectively admitted that the subsequent Supreme Court decision in SAS Institute didn't actually require it to do so.)
That said, in fairness to the poster you responded to, the OP didn't point out that the SG was asked for its opinion on this issue - that this wasn't unsolicited commentary from the Administration. Having noted that, I'd agree that there wasn't anything inappropriate about the Administration filing this brief. And it didn't, as the headline suggests, say or suggest that Apple and Broadcom should quit stalling and pay Caltech the $1.1 billion. That would have been inappropriate and, frankly, wouldn't have made any sense.
For one thing, there is no $1.1 billion judgment to pay. We're waiting on a new trial to determine the amount of the award(s). The Federal Circuit also remanded for a new trial with regard to infringement of one of the three patents-in-suit. The Federal circuit vacated the jury's infringement finding for that patent because the district court hadn't given the jury an instruction as to the proper meaning of a term used in the relevant patent claim.
In its brief the SG didn't weigh in on this case in general. It, e.g., neither agreed nor disagreed with the infringement findings or the Federal Circuit's remand on the damages award. It only weighed in on the statutory estoppel issue - i.e., whether Apple and Broadcom should have been allowed to make certain invalidity arguments to the district court jury based on what did and didn't happen in the (USPTO) IPR proceedings. The SG believes the Federal Circuit got that issue right and that the Supreme Court doesn't need to review its decision on that matter.
There are a number of moving parts and some nuance to this situation. But the basics, as relevant to the estoppel issue, are this: There were two separate sets of proceedings. There was a district court case in which Apple was accused by Caltech of infringement. There were also USPTO PTAB (Patent Trial and Appeal Board) proceedings in which Apple sought to challenge the validity of Caltech's patents. In the latter proceedings Apple had to first file petitions asking the PTAB to institute IPRs (inter partes reviews) of the patents in question. In filing those petitions Apple had to identify the grounds on which it was asking to be allowed to challenge those patents. If the IPRs were instituted, it wouldn't be allowed - in those reviews - to argue other grounds for invalidity.
Apple decided not to identify certain possible challenge grounds in its PTAB petitions because it wanted to be able to argue those grounds in the district court infringement case. As the law was understood at the time - and as the law is actually written - a party would only be estopped (i.e. barred) from making certain invalidity arguments in other proceedings (e.g. a district court trial) if those arguments were raised, or reasonably could have been raised, in an actual inter partes review that resulted in a final decision. The Federal Circuit had been clear on this point. The IPR is separate from the petition asking for the IPR. Whether a particular grounds was raised, or reasonably could have been raised, in a petition asking for an IPR is not what matters. Whether it was, or reasonably could have been, in the instituted IPR is what matters. And because Apple chose not to raise certain invalidity grounds in its petitions, it couldn't raise those grounds in the IPRs themselves. Therefore it wasn't - or shouldn't have been based on existing precedent and the law itself - estopped from arguing those grounds in the district court proceedings.
But despite the clear Federal Circuit precedent, the district court ruled that Apple was statutorily estopped from making certain invalidity arguments to the jury even though it had chosen not to make those arguments in its IPR petitions. Then, among other rulings in the case (some in Apple's favor and some not), a different Federal Circuit panel upheld the district courts ruling and overruled the prior Federal Circuit precedent. In other words, the rules were changed in the middle of the game and Apple - through no fault of its own, as it was following the then clearly established rules - was never allowed to make certain arguments regarding the invalidity of Caltech's patents.
With the Solicitor General's recommendation that the Supreme Court not review the (new) Federal Circuit decision, it's less likely that the Supreme Court will grant cert and decide the matter itself. More often than not (though not always), when the Court issues a CVSG it follows the advice of the Solicitor General. But I think the Court should grant cert. This decision seems wrong, and at a minimum it represents a significant about face, and it has the potential to affect a lot of patent infringement defendants.
A great deal of the tech that companies like Apple benefit from originated with federal research grants to universities. Anyone who feels that is socialism can lobby to stop all government funding of university research and Apple and other commercial companies can pay the universities directly for the research.