Federal Circuit Decision Erases $234 million Damages Awarded to WARF

Federal CircuitThe Federal Circuit recently issued a ruling reversing the district court’s denial of Apple Inc.’s (“Apple”) motion for judgment as a matter of law (“JMOL”) after finding no reasonable juror could have found infringement based on the evidence presented during the liability phase of trial. The decision erased an awarded over $234 million in damages to Wisconsin Alumni Research Foundation (WARF). The Court, however, affirmed the district court’s grant of summary judgment with respect to invalidity in favor of the patent owner. See Wisconsin Alumni Research Foundation v. Apple Inc., Nos. 2017-2265, 2017-2380 (Fed. Cir. Sept. 28, 2018) (Before Prost, Chief Judge, Bryson and O’Malley, Circuit Judges) (Opinion for the court, Prost, Chief Judge).

The case began when the Wisconsin Alumni Research Foundation (“WARF”) sued Apple for infringement of U.S. Patent No. 5,781,752. The ’752 patent relates to how computer processors execute a computer program’s instructions, describing a specific prediction technique for an out-of-order processor. WARF asserted claims 1 and 9, as well as dependent claims 2, 3, 5, and 6. The products accused of infringement were Apple’s A7, A8, and A8X integrated circuit chips, which include one or more processors. These processors include a Load-Store Dependency Predictor (“LSD predictor”). The LSD predictor detects data dependencies between load and store instructions and uses a prediction table to make predictions based on those dependencies.

After WARF filed its patent infringement suit, Apple answered and asserted counterclaims for declaratory judgment of non-infringement and invalidity of the ’752 patent. Before trial, both Apple and WARF moved for summary judgment with respect to Apple’s counterclaim and defensethat the ’752 patent was anticipated by U.S. Patent No. 5,619,662 (“Steely”). The district court granted summary judgment of no anticipation in favor of WARF. The district court then bifurcated the trial into two phases: liability and damages. After the liability phase, the jury found the asserted claims infringed and not invalid. After the damages phase of trial, the jury awarded WARF over $234 million in damages. Apple then moved for JMOL and, in the alternative, for a new trial. The district court denied Apple’s post-trial motions in their entirety. Apple appealed to the Federal Circuit.

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The Court first addressed whether a reasonable juror could have found that Apple’s processors literally infringe the asserted claims of the ’752 patent. Apple argued that its processors satisfy neither the “particular” nor the “mis-speculation” limitations recited in each of the claims. With respect to the “particular” limitation, independent claim 1 requires a predictor that “produce[s] a prediction associated with the particular [load] instruction.” Independent claim 9 requires a prediction table that “create[s] an entry listing a particular [load] instruction and [store] instruction each associated with a prediction.” Neither party asked the district court to construe “particular” before trial. However, WARF moved to preclude Apple’s expert, Dr. August, from testifying that a prediction cannot be associated with a “particular” load instruction if each load tag represents multiple load instructions. Apple argued that the term “particular” should carry its plain and ordinary meaningand that its expert’s theory of non-infringement was consistent with that meaning. Apple explained that the plain and ordinary meaning of “particular” meant that the claimed “prediction” must be associated with a singleload instruction (i.e., one and only one load instruction). The district court denied WARF’s motion to exclude the testimony of Apple’s expert, agreeing with Apple that the term “particular” should be given its plain and ordinary meaning, thus ruling that no jury instruction was necessary to define that term. It reasoned that “[f]rom the court’s reading of claim 1 as a whole, it contemplates a singleload instruction.”

On appeal, WARF disagreed with the district court’s understanding of the plain meaning of the term “particular.” The Court rejected WARF’s argument, explaining that the plain meaning of “particular,” as understood by a person of ordinary skill in the art after reading the ’752 patent, requires the prediction to be associated with a singleload instruction. It explained that each entry in Apple’s LSD prediction table includes a load tag and a prediction. Because of the way Apple’s hashtag algorithm is designed, multiple load instructions may hash to the same load tag. “Each load tag can, therefore, be associated with a groupof load instructions—namely, all of the load instructions that hash to the same load tag. The practical effect of this is that a given load instruction’s history will impact the prediction associated with allload instructions that hash to that same load tag.” Thus, applying the plain and ordinary meaning of the term “particular,” the Court held that no reasonable juror could have found literal infringement. The Court’s conclusion was sufficient to set aside the jury’s infringement finding, so it did not address Apple’s arguments regarding the “mis-speculation” limitation.

The Court then analyzed whether the district court erred in granting summary judgment of no anticipation based on the Steely prior art reference. The district court found that Steely did not disclose the “prediction” claimed in the ’752 patent. Apple argued on appeal that the district court’s determination was based on an incorrect construction of the term “prediction.” WARF contended that a “prediction” must be dynamic, meaning it is capable of receiving updates. In contrast, Apple argued that although a “prediction” does include dynamic predictions, the term is also broad enough to include static predictions (i.e., those incapable of receiving updates). The district court agreed with WARF, holding that a prediction, as used in the patent, must be “capable of receiving updates.”

The district court’s construction properly read the term “prediction” in the context of the entire patent. The term is used throughout the specification to describe a prediction value that updates based on a given load instruction’s historical mis-speculation behavior. Specifically, the prediction is updated as new information is gathered regarding the likelihood of future mis-speculation. Therefore, “it is clear that the claimed prediction must be capable of receiving updates.” Apple did not point to any portion of the specification that described a static prediction.

Finally, the Court rejected Apple’s argument that a genuine factual dispute existed as to whether Steely discloses predictions capable of receiving updates. It agreed with the district court that no reasonable juror could find that Steely discloses the “prediction” limitation of the ’752 patent’s claims. Thus, it affirmed the district court’s grant of summary judgment on the issue of invalidity in favor of WARF.

Take Away

Even if the parties in a patent infringement action do not request a claim construction of a particular term at the district court level, the Federal Circuit may still provide a quasi-construction of that claim term on appeal. The ordinary meaning of a claim term is its meaning to the ordinary artisan after reading the entire patent. Where a patent repeatedly and consistently characterizes a claim term in a particular way, it is proper to construe the claim term in accordance with that characterization.

The Author

Robert Schaffer

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

Robert Schaffer

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

Robert Schaffer

Dustin Weeks is an associate in the intellectual property practice group at Troutman Sanders. His practice spans all areas of intellectual property law, including patent prosecution, patent litigation (including Hatch-Waxman litigation), and client counseling. He represents clients ranging from start-ups and solo inventors to Fortune 500 companies. Dustin works closely with his clients to learn their business objectives so that he can tailor strategies to procure, protect, and enforce their intellectual property. Dustin specializes in post-grant proceedings (e.g. Inter Partes Reviews) before the Patent Trial and Appeal Board (PTAB) where he has extensive experience representing both patent owners and petitioners across a wide range of technologies, including wireless networking, pharmaceuticals, MEMs devices, medical devices, and electro-mechanical consumer devices. Dustin's broad experience in patent prosecution, counseling, and patent litigation uniquely positions him to navigate the blended practice of post-grant proceedings.

For more information or to contact Dustin, please visit his Firm Profile Page.

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