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Posts Tagged: "Apple"

Amici for Apple Tell SCOTUS Federal Circuit’s Article III Standing Ruling Violates Precedent, Upsets Congressional Intent in Enacting AIA Trials

In mid-November, consumer tech giant Apple filed a petition for writ of certiorari asking the U.S. Supreme Court to review the Federal Circuit’s decision to dismiss Apple’s appeal of unsuccessful inter partes review (IPR) challenges to the validity of several patents owned by Qualcomm. In that ruling, the Federal Circuit found that Apple’s choice to enter a patent licensing agreement with Qualcomm covering the patents-at-issue extinguished Article III standing as to Apple’s appeals from the Patent Trial and Appeal Board (PTAB). The question presented by Apple’s petition is: “Whether a licensee has Article III standing to challenge the validity of a patent covered by a license agreement that covers multiple patents.”

Federal Circuit Again Dismisses Apple Appeal of PTAB Rulings for Qualcomm; Newman Dissents

The U.S. Court of Appeals for the Federal Circuit (CAFC) today dismissed Apple, Inc.’s appeal of four decisions of the Patent Trial and Appeal Board (PTAB) in favor of Qualcomm. The CAFC found that an April 2021 CAFC decision (Apple I) on related PTAB rulings, in which the court found Apple lacked Article III standing, controlled. The opinion for the court was authored by Judge Prost. Judge Pauline Newman dissented. In part, the court in Apple I held that a global settlement between Apple and Qualcomm on the terms of a license agreement meant that “the validity of any single patent would have no effect on Apple’s ongoing payment obligations,” and that Apple had therefore failed to establish standing under the reasoning of MedImmune, Inc. v. Genentech, as it asserted. The court in Apple I explained: “Ultimately, Apple’s assertions amount to little more than an expression of its displeasure with a license provision into which it voluntarily entered. Such allegations do not establish Article III standing.”

Pro-Apple TTAB Bias Case Heats Up at CAFC

Following a motion filed in mid-October with the U.S. Court of Appeals for the Federal Circuit (CAFC) accusing the United States Patent and Trademark Office (USPTO) and its management of facilitating the appearance of bias at the Trademark Trial and Appeal Board (TTAB) in favor of Apple, Inc., Apple has now filed its opposition to that motion. Apple contends there is no precedent for allowing the motion, as it requests to supplement the record with documents that were not part of the trial record; that the TTAB is “an executive adjudicatory body” within the USPTO, which is “an executive agency within the Department of Commerce, and the TTAB’s administrative law judges are not subject to the recusal requirements set out in 28 U.S.C. § 455”; and that the documents Charles Bertini is asking to submit “reflect merely routine and fleeting professional contacts” that “fall far below the threshold of the personal contacts necessary to support disqualification on the basis of bias or prejudice.”

USPTO Judges, Management, Accused of Bias—This Time at the TTAB

A motion filed on Friday, October 15, with the U.S. Court of Appeals for the Federal Circuit (CAFC) requests that the appellant, Charles Bertini, be allowed to present evidence not of record in order to demonstrate that bias at the Trademark Trial and Appeal Board (TTAB) may have had a negative impact on his case. Bertini owns the mark APPLE JAZZ, which was registered in New York state in 1991 for entertainment services. He began using the mark well before that, in 1985. Unaware that he did not have a federal registration, Bertini filed an opposition against Apple, Inc.’s federal registration for “Apple Music” in 2016, along with an application to register APPLE JAZZ with the USPTO.

Allegedly ‘Late’ Disclosure of IP Rights to ETSI Does Not Make Patents Unenforceable in the U.S. or UK

Two recent court decisions in the United States and the United Kingdom, respectively, have considered (i) the disclosure obligation pursuant to Clause 4.1 of the European Telecommunications Standards Institute’s (ETSI) Intellectual Property Rights (IPR) Policy, and (ii) the impact this has on the enforceability of a patent subject to the Policy…. Both decisions were in the ongoing patent and fair, reasonable, and non-discriminatory (FRAND) related litigations between Optis and Apple. In summary, the decisions confirmed that neither Optis nor its predecessors had breached their duty to disclose IPR to ETSI under clause 4.1, nor did the timing of their disclosures constitute egregious misconduct, so as to result in an implied waiver under U.S. law, or in the case of the UK, a proprietary estoppel, preventing or restricting enforcement of the patent.

Senators Tear into Facebook and Google Reps During ‘Big Data, Big Questions’ Hearing on Competition and Privacy

The Senate Judiciary Committee’s Subcommittee on Competition Policy, Antitrust, and Consumer Rights held a hearing yesterday titled “Big Data, Big Questions: Implications for Competition and Consumers,” in which both Republican and Democratic senators pushed representatives of Facebook and Google to answer difficult questions about their platforms’ impact on everything from competitive marketplaces to teenagers’ body image. The hearing is one in a series that aims to conduct a bipartisan review of America’s competition issues, according to Subcommittee Chair, Amy Klobuchar (D-MN).

Federal Circuit Affirms 101 Invalidation of Secure Transaction System Patents in Victory for Apple and Visa

On Thursday, August 26, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Universal Secure Registry LLC v. Apple Inc. in which the appellate court affirmed the District of Delaware’s grant of a motion to dismiss Universal Secure Registry’s (USR) patent infringement allegations. In a decision that will be discouraging to some, though unsurprising, the Federal Circuit okayed the district court’s invalidation of all asserted claims from USR’s four patents-in-suit, finding that each patent was properly gunned down after being placed on the firing line of Section 101 subject matter ineligibility. The opinion was authored by Judge Stoll.

Note to Congress: Resist Big Tech Pleas to Weaken Strong Patents in Light of Recent Losses

In recent days, both Google and Apple have lost big patent cases. On August 13, Apple lost a $300 million jury verdict to PanOptis. Also on August 13, Google was found to infringe five Sonos patents at the International Trade Commission (ITC) in an initial determination by Judge Charles E. Bullock, which, if upheld by the full Commission, would block the importation of Google hardware, including Chromecast and Pixels. This likely means that Apple, Google and their big tech allies will use these instances, as well as other recent high-profile patent losses, as evidence of the need for yet more innovation-crippling patent reform. That would be a huge mistake for America at a time when we find ourselves locked in a race for technological supremacy with the Chinese.

CAFC Holds Bylaws Failed to ‘Effectuate Present Automatic Assignment’, Thwarting Apple’s Attempt to Dismiss Infringement Suit

On August 2, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed the U.S. District Court for the Northern District of California’s denial of Apple’s motion to dismiss in Omni MedSci, Inc. v. Apple, Inc. The majority, with Judge Linn writing, determined that the University of Michigan’s (UM’s) bylaws did not effectuate a present automatic assignment of patent rights from one of its faculty members…. The CAFC concluded that paragraph 1 of Bylaw 3.10 does not unambiguously constitute either a present automatic assignment or a promise to assign in the future and is instead best read as a “statement of intended disposition and a promise of a potential future assignment . . .”

ITC and Trade Secret Cases Against Apple Over Pulse Oximetry Tech Highlight Need for Better Ways to Rein in Big Tech

In late June, medical technology firm Masimo Corporation and its consumer device subsidiary Cercacor Laboratories filed a complaint with the U.S. International Trade Commission (ITC) asking the agency to institute a Section 337 investigation into several versions of the Apple Watch. Masimo’s allegations, which also include trade secret litigation ongoing in U.S. district court, follow an increasingly familiar narrative in which a Big Tech player, in this case Apple, engages in licensing negotiations with a small tech developer, only to poach employees and ideas from the smaller firm without paying the original developers.

CAFC Affirms District Court Section 101 Dismissal in Patent Infringement Suit Brought Against Samsung/Apple; Newman Dissents

On June 11, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed the U.S. District Court for the Northern District of California’s grant of a motion to dismiss for Apple and Samsung in a patent infringement action brought by Yanbin Yu and Zhongxuan Zhang (collectively, “Yu”). Yu alleged infringement of Claims 1, 2, and 4 of U.S. Patent No. 6,611,289 (the ‘289 patent), titled “Digital Cameras Using Multiple Sensors with Multiple Lenses,” and the court dismissed due to ineligibility under Section 101. Judge Pauline Newman dissented.

CAFC Affirms PTAB Finding that Certain Uniloc Claims are Invalid, But Says Apple Failed to Prove Other Claims Unpatentable

On May 12, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed the decision of the Patent Trial and Appeal Board (PTAB/ Board) in an inter partes review (IPR), holding the PTAB properly construed the claim language.

In April 2018, Apple Inc. filed a petition for IPR, alleging that all 25 claims of U.S. Patent No.  8,539,552 (“the ‘552 patent”) owned by Uniloc 2017 LLC were unpatentable. Apple Inc. v. Uniloc 2017 LLC, No. IPR2018-00884, Petition at 1 (P.T.A.B.). During the IPR, the PTAB held claims 1-17 and 23-25 of the ‘552 invalid for obviousness in view of U.S. Patent No. 6,324,279 (“Kalmanek”). Uniloc then appealed the decision. On appeal, Uniloc argued that the Board’s decision to invalidate the claims of the ‘552 patent resulted from an erroneous construction of a claim term. In its cross-appeal, Apple argued that the PTAB erred in holding that Apple failed to show the remaining claims of the ‘552 patent, claims 18-22, would have been obvious in view of Kalmanek. The CAFC upheld the PTAB on all issues.

A New Trial is Ordered with Respect to Damages in Optis Wireless v. Apple, Despite No FRAND Claims at Issue

On April 14, 2021, in a somewhat surprising about face, Judge Rodney Gilstrap ordered a new trial with respect to damages in Optis Wireless Technology, LLC et al. v. Apple Inc., Civil Action No. 2:19-cv-00066-JRG (E.D. Texas), despite previously ruling that no FRAND based claims remained in the case. This ruling adds even more silt to the already murky waters of damages for patents related to standardized technology. In a previous article, we discussed the confusing and problematic convergence of FRAND licensing rates and reasonable royalty damages for patent infringement, despite these two concepts having different origins and seeking to achieve different objectives: i.e., patent damages being a creature of statute and case law and seeking to compensate a patent owner for infringement, whereas FRAND commitments are rooted in contract and seek, amongst other things, to ensure that licenses can be obtained for standardized technology and that royalty stacking does not become an issue (e.g. as reflected in “top-down” approaches used to determine FRAND rates for standards essential patents). As noted in that article, one problem with this convergence is that it facilitates hold out. Why put money in the parking meter if the fine is no more that the fee?

CAFC Dismisses Apple’s Bid to Overturn PTAB Holding it Failed to Prove Qualcomm Patents Obvious

The U.S. Court of Appeals for the Federal Circuit (CAFC) yesterday dismissed two appeals filed by Apple against Final Written Decisions of the Patent Trial and Appeal Board (PTAB) finding that Apple did not prove certain claims of two Qualcomm patents obvious. The appeal stems from a suit brought by Qualcomm in the U.S. District Court for the Southern District of California for infringing claims of its U.S. patents 7,844,037 and 8,683,362. Apple subsequently petitioned for inter partes review (IPR) of claims 1–14, 16–18, and 19–25 of the ’037 patent and claims 1–6 and 8–20 of the ’362 patent. The Board held that Apple did not prove the challenged claims in either patent would have been obvious, but then Apple and Qualcomm settled all worldwide litigation between them. The parties thus moved to dismiss Qualcomm’s district court action with prejudice, which the district court granted, but Apple appealed the Board’s final written decisions anyway.

What the Latest Optis Wireless v. Apple Ruling Means for Patent Infringement Damages for SEPs

In a previous article, we considered the difference between a reasonable royalty for infringement of a U.S. patent and a fair, reasonable and non-discriminatory (FRAND) rate for licensing standards essential patents (SEPs). Among other points, the article discussed the then ongoing case between Optis Wireless Technology, LLC et al. v. Apple Inc., Civil Action No. 2:19-cv-00066-JRG (E.D. Texas, September 10, 2020). Most recently, Judge Rodney Gilstrap issued an Opinion and Order as to Bench Trial Together with Supporting Findings of Fact and Conclusions of Law (“Opinion and Order”) and ordered Final Judgment be entered. This Opinion and Order sheds a little more light on the issue of damages for SEPs, including the role of exemplary damages for willful infringement, but also leaves some key questions unanswered.