25 F.4th 960
Fed. Cir.2022Background
- Wi‑LAN owns U.S. Pat. No. 8,457,145 (bandwidth allocation in wireless systems) and U.S. Pat. No. 8,537,757 (PHY mode selection/modulation/error‑protection); Apple’s accused products implement LTE/VoLTE.
- Apple sued for declaratory judgment of noninfringement/invalidity; Wi‑LAN counterclaimed that certain iPhone models infringe asserted claims of both patents.
- The district court construed “subscriber unit/station” as “module that receives uplink bandwidth from a base station, and allocates the bandwidth across its user connections.”
- A jury found infringement of claims 9, 26, 27 (’145) and claim 1 (’757) and awarded $145.1M; the district court ordered a new trial on damages after excluding portions of Wi‑LAN’s expert proof; the retrial produced $85.23M.
- Apple moved JMOL/noninfringement (including that iPhones as sold lack the claimed subscriber unit); Apple also relied on an Intel‑Wi‑LAN license as shielding Intel‑chip iPhones. Wi‑LAN cross‑appealed the license interpretation and challenged the damages retrial.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Proper construction of “subscriber unit/station” | Apple: term should mean CPE/standalone device (exclude user device subcomponents) | Wi‑LAN: term means a module that receives bandwidth and allocates it across its user connections (as the district court held) | Court affirmed district court: intrinsic record does not show lexicographic definition or disavowal; construction as a "module" stands |
| Infringement as‑sold (iPhones) — JMOL | Apple: iPhones as sold lack the structural "user connections" (connections form only when phone is powered/connected) so no subscriber unit | Wi‑LAN: evidence (Dr. Madisetti) that baseband processor and buses (I2S, PCIe) in phones as sold provide the two connections and MAC allocates bandwidth across them | Court held substantial evidence supports jury verdict; denial of JMOL on noninfringement was affirmed |
| Damages methodology (second retrial) — admissibility of Kennedy’s royalty opinion | Apple: Kennedy failed to apportion value to the asserted patents and relied on comparable licenses without tying them to the patents’ value here | Wi‑LAN: Kennedy’s comparable‑license approach was reasonable | Court held Kennedy’s methodology was unreliable and untethered to case facts; district court abused discretion by denying new trial — verdict vacated and new damages trial required |
| License (Intel–Wi‑LAN §3.2) — scope and duration | Wi‑LAN: §3.2 does not create a perpetual license for post‑term activities (Intel sales after term) | Apple: §3.2’s survival clause grants perpetual license for Licensed Activities of the type engaged in during term (thus protecting Intel‑chip iPhones sold after term) | Court held §3.2 grants a term license only and merely preserves protection for activities actually engaged in during the term; reversed summary judgment for Apple on this point |
Key Cases Cited
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (claim‑construction framework and reliance on intrinsic evidence)
- Hill‑Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367 (Fed. Cir. 2014) (lexicography/disavowal limits on claim scope)
- Liebel‑Flarsheim Co. v. Medrad, Inc., 358 F.3d 898 (Fed. Cir. 2004) (specification must show manifest exclusion to limit claims)
- Daubert v. Merrell Dow Pharm., 509 U.S. 579 (U.S. 1993) (trial court gatekeeping on expert methodology under Rule 702)
- Summit 6, LLC v. Samsung Elecs. Co., Ltd., 802 F.3d 1283 (Fed. Cir. 2015) (expert methodology must be tied to case facts)
- VirnetX, Inc. v. Cisco Sys., Inc., 767 F.3d 1308 (Fed. Cir. 2014) (need to account for differences when using comparable licenses)
- Bio‑Rad Labs., Inc. v. 10X Genomics Inc., 967 F.3d 1353 (Fed. Cir. 2020) (comparables commonly used for reasonable‑royalty proof)
- Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301 (Fed. Cir. 2009) (standard of review for damages methodology and Daubert analysis)