By Thomas Long, J.D.
After Wi-LAN rejected a remittitur of an earlier jury award of $145 million to $10 million, a new damages trial was held, resulting in a per-unit royalty award of $0.45 applied to over 189 million infringing products.
In a retrial of a case first tried in August 2018, a jury has determined that Apple Inc. must pay Canadian IP licensing firm Wi-LAN, Inc., over $85 million in damages for using technology in its iPhone devices that infringed Wi-LAN’s patents. On January 3, 2019, the federal district court in San Diego granted Apple’s request for a conditional remittitur from the jury’s original $145.1 million award to a $10 million after ruling that that Wi-LAN’s experts overstated the "footprint" of the patented technology in presenting its damages theory to the jury and failed to properly apportion between the infringing and noninfringing features of the iPhone. Wi-LAN chose not to accept the remittitur, and the court granted Apple a new trial on damages. The new verdict reflects a per-unit royalty payment of $0.45 times 189.4 million units, for a total award of $85.23 million (Wi-LAN, Inc. v. Apple Inc., January 24, 2020).
In 2014, Apple filed suit against Wi-LAN seeking a declaratory judgment that the iPhone did not infringe two Wi-LAN patents: U.S. Patent No. 8,457,145 ("the ’145 patent"), titled "Method and Apparatus for Bandwidth Request/Grant Protocols in a Wireless Communication System," and U.S. Patent No. 8,537,757 ("the ’757 patent"), titled "Adaptive Call Admission Control for Use in a Wireless Communication System." The ’145 patent covered a method for requesting bandwidth in a wireless communication system, using subscriber units in communication with a base unit. The ’757 patent claimed a subscriber station for a wireless communication system configured to control the admission of new connections and the suspension of existing connections between a base station and customers’ equipment. Wi-LAN counterclaimed for infringement, and the case was tried before a jury. The jury found on August 1, 2018, that Apple infringed all three asserted claims of the ’145 patent and the sole asserted claim of the ’757 patent, and decided that Wi-LAN should be awarded $145.1 million in damages.
Apple moved for JMOL on the issue of infringement and for a new trial on damages, or in the alternative for a remittitur. The primary point of contention was the method of apportionment of damages. According to Apple, damages should be apportioned by using the smallest salable patent practicing unit (SSPPU), which Apple argued was the baseband processor. Wi-LAN used a "direct valuation" approach in apportioning damages. Apple contended that Wi-LAN’s approach was "riddled with legal and factual errors." The court sided with Apple, finding that Wi-LAN’s experts had arrived at a royalty figure by using the iPhone’s voice over LTE (VOLTE) capability as a starting point. However, VOLTE was not the patented technology. The inventor of the ’145 patent testified that he did not invent VOLTE, and one of Wi-LAN’s experts testified that the technology of the ’145 patent was "related to" VOLTE, not equivalent to it. Therefore, the court decided that the opinions of Wi-LAN’s experts as to the value of the patented technology were without evidentiary basis and should not have been admitted to the jury. The court granted Apple’s request for a conditional remittitur of $10 million. In the event that Wi-LAN did not accept the remittitur, the court stated that it would grant Apple’s motion for a new trial on damages. Wi-LAN rejected the remitter, and a new damages trial ensued.
According to a media release by McKool Smith Hennigan PC—the firm representing Wi-LAN—the jury deliberated for three hours before awarding Wi-LAN the full amount the company had requested.
This case is No. 3:14-cv-02235-DMS-BLM.
Attorneys: Ashley Nicole Moore (McKool Smith Hennigan PC) for Wi-LAN, Inc. Mark D. Fowler (DLA Piper LLP) for Apple Inc.
Companies: Wi-LAN, Inc.; Apple Inc.
MainStory: TopStory Patent TechnologyInternet CaliforniaNews
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