The Technology & Information Law Blog

Analysis by Charles Gideon Korrell

Month: August 2024

  • WARF v. Apple: A Cautionary Tale of Waiver and Preclusion

    WARF v. Apple: A Cautionary Tale of Waiver and Preclusion

    In its August 28, 2024 opinion in Wisconsin Alumni Research Foundation v. Apple Inc., the Federal Circuit issued a decisive ruling affirming two final judgments in favor of Apple, closing the door on WARF’s decade-long effort to assert U.S. Patent No. 5,781,752 across successive generations of Apple processors. The decision underscores the high stakes of litigation strategy—particularly the consequences of waiving infringement theories and the powerful reach of preclusion doctrines.

    Background

    The patent at issue, the ’752 patent, relates to a “table-based data speculation circuit for parallel processing computers.” WARF initially brought suit in 2014 (WARF I) against Apple’s A7 and A8 processors, alleging literal infringement. Shortly before trial, WARF agreed to drop its doctrine of equivalents theory in exchange for Apple not introducing its own patent at trial. A jury found literal infringement, but on appeal, the Federal Circuit reversed, holding that no reasonable jury could find that Apple’s processors met the “particular” limitation of the asserted claims. See Wisconsin Alumni Research Foundation v. Apple Inc., 905 F.3d 1341 (Fed. Cir. 2018).

    In parallel, WARF filed WARF II, targeting Apple’s A9 and A10 processors. Following the reversal in WARF I, WARF sought to revive the doctrine of equivalents for both actions. The district court rejected this effort, finding the doctrine waived in WARF I and barred in WARF II under both issue preclusion and the Kessler doctrine. The Federal Circuit affirmed on all fronts.

    Waiver: Strategic Decisions Come at a Cost

    The panel (Prost, Taranto, Chen, JJ.) upheld the district court’s finding that WARF intentionally waived its doctrine of equivalents theory in WARF I for strategic reasons. WARF had bargained away that theory to exclude potentially damaging evidence—Apple’s own patent on the accused LSD Predictor.

    The court rejected WARF’s argument that the Federal Circuit’s 2018 clarification of the term “particular” constituted a claim construction change that justified resurrecting the abandoned theory. Unlike Exxon Chemical Patents v. Lubrizol, 137 F.3d 1475 (Fed. Cir. 1998), where a new construction was first adopted on appeal, WARF had long been on notice of Apple’s plain-meaning interpretation and opted not to preserve an alternatives-based trial strategy. The court characterized the waiver as intentional and strategic, distinguishing it from forfeiture.

    Preclusion: WARF II Barred by Issue Preclusion and Kessler

    The court further held that WARF II was precluded on two independent bases:

    1. Issue Preclusion: Because the A9 and A10 processors were “essentially the same” as the A7 and A8 (a fact WARF had admitted in earlier briefing), and because infringement was fully litigated in WARF I, the same “issue” was decided. The Federal Circuit emphasized that both literal infringement and the doctrine of equivalents are part of a single infringement issue under § 271, citing Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605 (1950), and Winans v. Denmead, 56 U.S. 330 (1853). It also relied on Nystrom v. Trex, 580 F.3d 1281 (Fed. Cir. 2009), and Aspex Eyewear v. Marchon, 672 F.3d 1335 (Fed. Cir. 2012), in concluding that failing to assert a doctrine-of-equivalents theory in one case bars its assertion against essentially the same products in another.
    2. Kessler Doctrine: Even if issue preclusion didn’t apply, the court held that Apple had acquired the “noninfringing status” of its LSD Predictor, protecting both it and its future sales from repeat litigation. The court emphasized that the Kessler doctrine prevents harassment through successive suits involving the same or trivially modified products, referencing SpeedTrack Inc. v. Office Depot, 791 F.3d 1317 (Fed. Cir. 2015), and Brain Life v. Elekta, 746 F.3d 1045 (Fed. Cir. 2014).

    Key Takeaways

    This decision is a stark reminder that:

    • Strategic waivers are binding. WARF’s tactical decision to drop its doctrine-of-equivalents theory in WARF I could not be undone after the fact.
    • Literal and equivalent infringement theories are not distinct “issues” for preclusion purposes. Once infringement of a product has been adjudicated, relitigating under a different infringement theory is barred.
    • The Kessler doctrine remains robust. It protects adjudged noninfringers from successive suits, even involving post-judgment sales or similar product generations.

    For those navigating complex infringement disputes, this opinion reinforces the need to preserve all viable theories through trial—or risk losing them forever.

    By Charles Gideon Korrell

  • Realtime Adaptive Streaming LLC v. Sling TV: “Red Flags” in § 285 Fee Awards

    Realtime Adaptive Streaming LLC v. Sling TV: “Red Flags” in § 285 Fee Awards

    In a significant opinion issued on August 23, 2024, the Federal Circuit vacated a district court’s award of attorneys’ fees under 35 U.S.C. § 285 in Realtime Adaptive Streaming LLC v. Sling TV, LLC, No. 23-1035. The decision serves as a clarifying reminder that the label “exceptional” requires more than a retrospective string of unfavorable rulings. It demands careful judicial scrutiny of the substantive merit of each supposed “red flag.”

    Background

    The litigation arose from Realtime’s assertion of several patents, including U.S. Patent No. 8,867,610 (“the ’610 patent”), which was ultimately found invalid under § 101. After prevailing at summary judgment and on appeal, DISH moved for attorneys’ fees. The district court granted the motion, identifying six “red flags” that allegedly should have warned Realtime of the weakness of its case.

    These red flags included:

    1. The Google and Netflix district court decisions finding claims of the related ’535 patent ineligible under § 101.
    2. The Federal Circuit’s nonprecedential decision in Adaptive Streaming Inc. v. Netflix, Inc., 836 F. App’x 900 (Fed. Cir. 2020).
    3. IPR decisions invalidating claims of the ’535 patent.
    4. Non-final Office Actions during reexamination of the ’610 patent.
    5. A warning letter from DISH.
    6. Expert opinions from DISH’s technical expert, Dr. Alan Bovik.

    The district court concluded that, in light of these events, Realtime’s “dogged pursuit” of the litigation rendered the case exceptional.

    Federal Circuit: Some Red Flags Are Not So Red

    On appeal, the Federal Circuit emphasized the discretion afforded to district courts under Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545 (2014), but reminded that such discretion is not unbounded. Relying on Highmark Inc. v. Allcare Health Mgmt. Sys., Inc., 572 U.S. 559 (2014), the court applied an abuse-of-discretion standard and found that the district court had erred in the weight—and in some cases, the very relevance—assigned to several of the six red flags.

    Notably:

    • Google and Netflix Decisions: The Federal Circuit upheld their relevance, finding the claims in Realtime were “essentially the same in substance” as those invalidated in the earlier cases. These were fair warning signs of potential ineligibility.
    • Adaptive Streaming: By contrast, the court found this decision inapposite. The technology at issue was materially different, and the Federal Circuit criticized the district court for relying on a nonprecedential opinion without a rigorous comparison of claim language.
    • Board Decisions (IPRs and Reexams): The court distinguished prior art invalidity under §§ 102/103 from conventionality under Alice Step Two, citing Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018), and Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016). The district court failed to bridge this analytical gap.
    • Notice Letter: The mere act of sending a letter threatening fees does not convert a case into an exceptional one. The Federal Circuit noted that such letters could become a routine tactic if courts accepted them as decisive evidence of exceptionality.
    • Expert Opinions: The court rejected the notion that a party’s failure to adopt the opposing expert’s views—absent a clear showing of meritless advocacy—could support a fee award. Competing expert declarations are a hallmark of patent litigation, not an aberration.

    Practical Takeaways

    The decision reinforces that fee awards must be grounded in a holistic and fact-specific analysis, not a checklist of litigation setbacks. While unfavorable precedent or IPR outcomes may legitimately raise concerns about a case’s merit, they do not by themselves justify shifting fees.

    This ruling should temper overbroad attempts to bootstrap § 101 ineligibility rulings into fee awards, particularly where litigants have plausible arguments or claim distinctions that the courts ultimately reject. It also underscores that a fee-shifting analysis must account for the nuanced legal standards of subject matter eligibility post-Alice, where conventionality and inventive concepts demand more than mere reference to the prior art.

    Conclusion

    Realtime v. Sling TV is an important checkpoint in the post-Octane jurisprudence. It highlights that not all warning signs are dispositive, and district courts must do more than count “red flags.” They must weigh them—carefully, individually, and with an eye toward whether the case truly “stands out” under § 285.

    By Charles Gideon Korrell

  • Platinum Optics v. Viavi: Dismissal of Appeal for Lack of Standing Despite Prior Infringement Disputes

    Platinum Optics v. Viavi: Dismissal of Appeal for Lack of Standing Despite Prior Infringement Disputes

    In Platinum Optics Technology Inc. v. Viavi Solutions Inc., No. 23-1227 (Fed. Cir. Aug. 16, 2024), the Federal Circuit dismissed an appeal from an inter partes review (IPR) decision for lack of Article III standing. The court declined to reach the merits of the Patent Trial and Appeal Board’s (PTAB) decision upholding the validity of Viavi’s U.S. Patent No. 9,354,369, which claims optical filters using hydrogenated silicon with precise optical properties.

    Background

    Viavi’s ’369 patent claims a hydrogenated silicon material with a high refractive index (n > 3) and low extinction coefficient (k < 0.0005) over a wavelength range of 800–1100 nm—properties touted as enhancing optical filter performance. Platinum Optics Technology Inc. (PTOT) challenged the claims in an IPR, arguing obviousness based on prior art including Pilgrim, Gibbons, Lairson, and Yoda. The PTAB disagreed, concluding that the specific combination of optical properties was not taught or suggested in the cited references and would have required significant experimentation without an expectation of success.

    Following this defeat, PTOT sought Federal Circuit review—but was met with a standing challenge.

    No Injury, No Standing

    The court reiterated that unlike participation before the PTAB, appeal to the Federal Circuit requires Article III standing. Relying on Lujan v. Defenders of Wildlife, 504 U.S. 555 (1992), Spokeo, Inc. v. Robins, 578 U.S. 330 (2016), and Phigenix, Inc. v. Immunogen, Inc., 845 F.3d 1168 (Fed. Cir. 2017), the panel emphasized the need for a “concrete and particularized” injury.

    PTOT cited two bases for standing: (1) continued distribution of the same products previously accused of infringing the ’369 patent, and (2) development of new optical filters. But the infringement claims involving the ’369 patent had been dismissed with prejudice in earlier district court actions (Viavi I and Viavi II), foreclosing future liability from those suits. Citing Apple Inc. v. Qualcomm Inc., 992 F.3d 1378 (Fed. Cir. 2021), and Prasco, LLC v. Medicis Pharm. Corp., 537 F.3d 1329 (Fed. Cir. 2008), the court held that PTOT’s speculation about the risk of future litigation did not amount to a substantial risk of infringement or a threat sufficient to establish standing.

    As to the new products under development, the court found the supporting declaration from PTOT’s executive vague and conclusory. Following JTEKT Corp. v. GKN Auto. LTD., 898 F.3d 1217 (Fed. Cir. 2018), and Allgenesis Biotherapeutics Inc. v. Cloudbreak Therapeutics, LLC, 85 F.4th 1377 (Fed. Cir. 2023), the court explained that declarations lacking specific technical detail or concrete plans cannot support a finding of injury in fact.

    Key Takeaways

    • A history of litigation—without more—does not establish standing to appeal an IPR decision, particularly where infringement claims have been dismissed with prejudice.
    • General assertions about ongoing product development are insufficient. Concrete, detailed plans and a plausible risk of suit are necessary to satisfy Article III.
    • PTOT’s inability to cross the standing threshold means the Federal Circuit left undisturbed the PTAB’s substantive finding that the ’369 patent was not shown to be obvious over the prior art.

    While the technical validity of Viavi’s patent remains intact, Platinum Optics underscores a strategic pitfall for petitioners: an IPR loss cannot always be appealed, even after contentious district court litigation. Petitioners should consider standing implications early—especially if litigation history may later undercut injury arguments on appeal.

    By Charles Gideon Korrell