The California Institute of Technology v. Dell Technologies Inc. et al DC

The Federal Circuit has ruled that appellate review is available for USPTO decisions not to initiate reexaminations based on inter partes review (IPR) estoppel, which bars reexam requests by petitioners whose IPRs against the same claims have reached final written decisions. In Alarm.com v. Hirshfeld, the court held in a February 24 precedential decision that the Eastern District of Virginia was wrong to reject an Administrative Procedure Act (APA) lawsuit challenging a reexam denial on that basis. The Federal Circuit instead concluded, contrary to the district court, that the relevant statutory scheme does not preclude appeals of IPR estoppel decisions with respect to reexams. The decision comes less than a month after the Federal Circuit broadened the applicable standard for IPR estoppel as applied in district court—an already wider-reaching requirement than for reexams.

On February 4, the Federal Circuit vacated and remanded a $1.1B damages award against Apple and Broadcom in litigation filed by the California Institute of Technology (Caltech), also trimming the underlying infringement verdict. While the reversal of such a large damages verdict is notable on its own, the Federal Circuit’s decision was also significant due to its expansion of inter partes review (IPR) estoppel—the statutory requirement that restricts petitioners from raising certain IPR validity arguments in subsequent district court challenges. In Caltech, the Federal Circuit resolved a district court split over the application of that requirement by overruling its 2016 Shaw Industries Group v. Creel Automated Systems decision, now holding that a petitioner is estopped not just from later asserting arguments actually raised in a successful petition, but also from including those arguments that they “reasonably could have” included.

A divided Federal Circuit has reversed key portions of a Central District of California jury’s January 2020 verdict for the California Institute of Technology (Caltech) against Apple and Broadcom. In a February 4 precedential decision, a majority of the appellate court overturned the jury’s finding of infringement as to one of the three tried Wi-Fi networking patents and remanded for a new trial, ruling that the lower court erred by failing to instruct the jury on the proper construction of a key claim term. The majority also unwound the jury’s $1.1B damages award, concluding that the district court was wrong to allow a “legally erroneous” two-tiered damages theory that applied separate hypothetical negotiations to the sale of the same chips.

California Institute of Technology (Caltech) has added a case against Samsung (2:21-cv-00446) to the litigation campaign that saw a large infringement verdict against Apple and Broadcom in January of this year. The university again asserts the same five patents in suit against the other three defendants in active district court cases: Dell, HP, and Microsoft. Caltech targets Samsung over the provision of various “Wi-Fi products” (e.g., computers, refrigerators, smartphones, smart watches, tablets, TVs, etc.) that are compliant with certain Wi-Fi standards (802.11n, 802.11ac, and/or 802.11ax) and the 12 low-density parity-check (LDPC) error correction codes incorporated in those standards.

Late last week, California Institute of Technology (Caltech) filed three new complaints in the litigation campaign that resulted in an infringement verdict awarding $1.1B in damages—$837.8M against Apple and $270.2M against Broadcom—in January 2020. One of the complaints is original, asserting five patents against Microsoft (6:21-cv-00276), three tried to the California jury, one at issue in the early days of this campaign, and one new to the litigation. Caltech amended its complaints in November 2020 cases filed against Dell and HP such that all five error-correction coding patents are now asserted against each active defendant. The accused products throughout have been various computer products (e.g., laptops, tablets, thin clients, workstations, etc.) that comply with certain Wi-Fi standards (802.11n, 802.11ac, and/or 802.11ax), targeted for the 12 low-density parity-check (LDPC) codes incorporated in those standards.

As a January 2020 infringement verdict returned against Apple and Broadcom by a Central District of California jury is appealed to the Federal Circuit, California Institute of Technology (Caltech) has hit Dell (6:20-cv-01042) and HP (6:20-cv-01041), each with a Western District of Texas complaint. The same three patents earlier found infringed are again at issue, with Caltech suing Dell and HP over the provision of various computer products (e.g., laptops, tablets, thin clients, workstations, etc.) that comply with certain Wi-Fi standards (802.11n, 802.11ac, and/or 802.11ax), with the 12 low-density parity-check (LDPC) codes incorporated in those standards at issue.

A Central District of California jury has returned an infringement verdict against Apple and Broadcom in a lawsuit over Wi-Fi technology filed by the California Institute of Technology (Caltech). In that January 29 verdict, the jury awarded $1.1B in damages—$837.8M against Apple and $270.2M against Broadcom, both as a running royalty—but declined to find that the companies’ infringement of the three remaining patents-in-suit had been willful.