Optis Wireless Technology, LLC et al v. Apple Inc. DC CAFC
- Filed: 02/25/2019
- Closed: 02/26/2021
- Latest Docket Entry: 06/23/2022
- All Upcoming Events:
May 6, 2022
PanOptis Patent Management, LLC; Optis Cellular Technology, LLC; Unwired Planet, LLC; and Unwired Planet International Limited (collectively, PanOptis) have sued Ford (2:22-cv-00133) in the Eastern District of Texas, asserting a group of former Ericsson or Panasonic patents and targeting connected vehicles alleged to communicate according to the 4G/LTE cellular network standard. PanOptis appears to be the latest to join a line of Avanci, LLC licensors taking aim at Ford.
February 18, 2022
The Federal Circuit has hit the ground running in the early weeks of 2022, overturning two sizable damages verdicts on February 4: the California Institute of Technology’s (Caltech’s) $1.1B award against Apple and Broadcom and Quarterhill Inc. subsidiary Wi-LAN Inc.’s (WiLAN’s) $85.2M award against Apple. Now, recent activity suggests that at least the latter ruling could potentially have a ripple effect on other large damages awards currently on appeal. The ensuing weeks have seen the defendant-appellants in those cases cite the WiLAN opinion, which faulted a district court for allowing a flawed methodology that was “untethered to the facts of this case”, as relevant authority justifying similar reversals.
August 15, 2021
Earlier this year, Eastern District of Texas Judge Rodney Gilstrap overturned a $506.2M damages award included with an August 2020 jury verdict against Apple in standard essential patent (SEP) litigation brought by several subsidiaries of PanOptis Holdings, LLC (collectively, “Optis” or “PanOptis”). A second jury has now answered the damages question—put to it this time as “What sum of money, if any, paid by Apple now in cash, has Optis proven by a preponderance of the evidence would compensate Optis as a FRAND royalty for the damages resulting from infringement between February 25, 2019 and August 3, 2020?”—with a new figure: $300M.
April 18, 2021
District Judge Rodney Gilstrap has just overturned the $506.2M damages award returned as part of an August 2020 jury verdict against Apple in standard essential patent (SEP) litigation brought by several subsidiaries of PanOptis Holdings, LLC (collectively, “PanOptis”). The court partly granted Apple’s motion for a new trial, as to damages alone, faulting PanOptis for requesting a separate bench trial for issues related to its fair, reasonable, and non-discriminatory (FRAND) licensing obligations—and Apple for not objecting to that plan. Due to that bench trial, the jury ultimately set its damages award without hearing any mention of FRAND principles at all, arriving at an unacceptably ambiguous verdict—a result that Judge Gilstrap saw coming.
November 25, 2020
The COVID-19 pandemic has forced courts to rethink many aspects of the patent litigation process. While a number of district judges have moved hearings and other procedures online, the nation’s top patent venues effectively suspended jury trials through most of the summer—until District Judge Rodney Gilstrap of the Eastern District of Texas resumed patent trials in August after local infection rates began to fall. However, as the pandemic moves further into its second wave, Judge Gilstrap has now taken the notable step of halting all jury trials before him after a coronavirus outbreak during a trial under another judge in the Eastern District. Judge Gilstrap stated that he was doing so “reluctantly” but asserted that he had no alternative—arguing that the face-to-face aspect of in-person trials is essential for due process.
November 16, 2020
At the end of October, another Texas jury returned a $500M-plus verdict in favor of VirnetX Inc. against Apple. While 2020 has not been all roses for patent plaintiffs—recall that a few weeks earlier, Roku won a noninfringement verdict in litigation filed by inventor-controlled NPE MV3 Partners LLC in District Judge Alan D. Albright’s first patent jury trial since he took the bench—the most recent VirnetX verdict does join a string of high-dollar awards in patent infringement cases this year.
Judge Albright Gears Up for His First Patent Trial as Federal Circuit Declines to Revisit Reversal of Transfer RulingOctober 2, 2020
District Judge Alan D. Albright has moved forward with his recently announced plan to resume jury trials in the Waco Division of the Western District of Texas despite the ongoing COVID-19 pandemic. On October 1, he presided over jury selection for what will be his first-ever patent jury trial, in litigation filed by inventor-controlled MV3 Partners LLC against Roku (6:18-cv-00308). While the decision to hold this trial is significant on its own, the leadup to jury selection in this case was not without its own intrigue. Shortly before the pretrial conference, Judge Albright ruled on a series of pending motions in limine, barring any characterization of the plaintiff as an NPE as well as any discussions of alleged forum shopping, among other topics, during voir dire and opening arguments. The ruling comes as the Federal Circuit, also last week, declined to rehear a recent decision that faulted Judge Albright for denying a convenience transfer in another campaign, amidst a broader debate over whether his treatment of such motions has unduly encouraged plaintiffs to pack the Waco Division with patent cases.
Judge Gilstrap Set to Receive Posttrial Motions and the PTAB using the NHK-Fintiv Rule to Block Multiple Trials, Optis Wireless Sues TeslaSeptember 26, 2020
Optis Wireless Technology, LLC; Optis Cellular Technology, LLC; Unwired Planet, LLC; Unwired Planet International Limited; and PanOptis Patent Management, LLC (collectively, Optis Wireless) have sued Tesla (2:20-cv-00310) over the provision of automobiles—including the Tesla Model S, 3, X, and Y—that communicate over the 4G/LTE cellular networking standard. The plaintiffs also seek a declaratory judgment “that its negotiation toward a FRAND license with Tesla—both directly and via patent pool Avanci—complied with FRAND” and “that Tesla has acted in bad faith and has lost its right to obtain a FRAND license”. The case has been assigned to Judge Rodney Gilstrap in the Eastern District of Texas, who just tried an Optis Wireless case to a jury that returned a $506.2M verdict against Apple.
Judge Albright Greenlights Patent Jury Trials in Waco Division, Citing Declining Local COVID-19 Infection RatesAugust 21, 2020
The nation’s top patent venues have adapted to the COVID-19 pandemic in markedly different ways, diverging most dramatically with respect to jury trials. While the Eastern District of Texas recently held the nation’s first patent jury trial since the start of the pandemic under District Judge Rodney Gilstrap, the Northern and Central Districts of California have issued orders suspending all such trials. However, until recently, both the Western District of Texas and the District of Delaware—the first- and second-most popular venues for NPE litigation, respectively—took a middle ground by giving presiding judges the discretion over whether to hold jury trials, effectively on a case-by-case basis. Now, District Judge Alan D. Albright has issued an order stating that the Western District’s Waco Division is ready to move forward with jury trials in patent cases, citing declining infection rates within that division and measures designed “to ensure trials can be conducted safely”.
Nation’s First Patent Jury Trial During Pandemic Ends in $506.2M Verdict for PanOptis, but VirnetX Trial Gets Pushed BackAugust 14, 2020
The COVID-19 pandemic has forced courts and litigants alike to rethink some of the core mechanics of patent cases—perhaps most notably, triggering disputes over the timing and format of jury trials. As recently reported by RPX, this has led the nation’s top patent venues to diverge in their approach to such trials. In particular, District Judge Rodney Gilstrap of the Eastern District of Texas has bucked the trend and pushed forward with the nation’s first patent jury trial since the start of the pandemic, which ended on August 11 in a $506.2M infringement verdict against Apple in litigation brought by several subsidiaries of PanOptis Holdings, LLC. However, another judge in the same district has now signaled a more conservative approach: the day before that verdict, District Judge Robert W. Schroeder III continued a planned retrial in litigation between VirnetX Inc. and Apple at the defendant’s request. By so ruling, Judge Schroeder has aligned himself with courts in other popular venues that have also opted not to proceed with jury trials—including some that also leave such decisions up to the presiding judge and others that have halted trials district-wide.
Apple Seeks Judgment That Gilstrap Cannot Make FRAND Compliance Determination for PanOptis Global License OfferMay 31, 2019
Over the past year, District Judge Rodney Gilstrap has dealt a series of setbacks to three subsidiaries of PanOptis Holdings, LLC—Optis Cellular Technology LLC; Optis Wireless Technology, LLC; and PanOptis Patent Management, LLC (collectively, PanOptis)—in their litigation asserting certain standard essential patents (SEPs). Last August, Judge Gilstrap ruled that PanOptis could not seek a declaratory judgment that its global license offer to Huawei, involving patents from various jurisdictions, had been fair, reasonable, and nondiscriminatory (FRAND), ruling that the NPE could only request such a judgment for its US patents. In March of this year, Judge Gilstrap also denied PanOptis’s request as to the US patents alone, holding that the record—reflecting license terms that did not give Huawei the option of a US-only license—lacked any evidence that would allow the court to rule on a US-only FRAND license. Apple has now made a similar set of arguments in a recently filed PanOptis lawsuit, asking that Judge Gilstrap dismiss the NPE’s claim seeking a declaratory judgment that global licensing offers made to Apple were FRAND for some of the same reasons cited by the court in March.
Gilstrap Refuses to Rule That PanOptis Met US FRAND Obligations in Huawei Suit but Awards Enhanced DamagesMarch 24, 2019
In September 2017, three subsidiaries of PanOptis Holdings, LLC—Optis Cellular Technology LLC; Optis Wireless Technology, LLC; and PanOptis Patent Management, LLC (collectively, PanOptis)—sued Huawei over a fair, reasonable, and nondiscriminatory (FRAND) patent licensing dispute, in part seeking a declaratory judgment that the NPE had complied with its FRAND obligations by offering certain global licensing terms to its international patent portfolio. However, the following August, District Judge Rodney Gilstrap ruled that PanOptis could only seek such a judgment for its US patents, shortly before the entry of a $10.6M willful infringement verdict later that month. Judge Gilstrap has now denied the NPE’s request for declaratory judgment, holding that the record lacked any evidence that would allow the court to rule on a US-only FRAND license. In the resulting final judgment, Judge Gilstrap awarded PanOptis $2.6M in enhanced damages, also imposing additional royalties based on a percentage of sales revenues for the accused products. These rulings come just over a month after the NPE’s acquisition by private equity firm Brevet Capital.
March 2, 2019
Weeks after the announcement of its acquisition by private equity firm Brevet Capital, PanOptis Holdings, LLC (through various litigating affiliates) has filed its first new infringement case in two years, suing Apple in the Eastern District of Texas over a group of patents declared essential to the LTE standard (2:19-cv-00066). Apple is accused of infringing the patents-in-suit—each of which originated with Ericsson, LG Electronics (LGE), Panasonic, or Samsung—through provision of “all [its] products capable of implementing the LTE standard”, including all “LTE-capable models” of Apple’s iPhone, iPad, Watch products. Three of the patents-in-suit have been previously asserted by PanOptis in a campaign that has also hit BlackBerry, Huawei, Kyocera, and ZTE.