Federal Circuit remands patent infringement award against Apple

[*ruling attached below]

A U.S. Court of Appeals for the Federal Circuit panel remanded a $7.3 million infringement award against Apple Inc. Thursday, finding the district court had overstated the enforceability of one of the patents at issue.

A jury awarded Core Wireless Licensing S.A.R.L. $3.5 million in 2016 after finding Apple infringed on patented technology that improves how mobile stations communicate with mobile devices. In a concurrent bench trial, U.S. Magistrate Judge Nathaniel Cousins rejected Apple's arguments that one of the two patents at issue wasn't enforceable because of an implied waiver, bringing Core Wireless' total award up to about $7.9 million.

Apple argued the patent was unenforceable because Nokia Inc., which had held the patent before Core Wireless acquired it, proposed the technology be incorporated as a standard for the European Telecommunications Standards Institute while contemporaneously filing for a Finnish patent application based on the technology. Though the policy wasn't adopted, Nokia still had an obligation to notify ETSI of the application, Apple argued, and failing to do so rendered the patent unenforceable. Core Wireless Licensing S.A.R.L. v. Apple Inc.*, 15-cv-05008 (N.D. Cal., filed Nov. 3, 2015).

Cousins rejected the argument, finding Nokia wasn't required to inform ETSI because ETSI had rejected the application. But the panel, comprised of Circuit Judges Todd M. Hughes, Jimmie V. Reyna and William C. Bryson, disagreed, finding Nokia was required to notify ETSI regardless of the status of the application.

Citing uncontested testimony from Apple's expert witness, the panel said companies submitting technical proposals are responsible for notifying standard-setting organizations of any patent applications for intellectual property that might be essential once that proposal is adopted. To follow the district court's interpretation, the panel wrote, would actually defy the point of the requirement, which is to allow the organization to make fully informed decisions about whether to adopt the proposal.

Noting that Core Wireless had made a number of additional arguments in support of the patents enforceability, the panel wrote, but "the district court did not adopt any of those arguments, and we do not find any of them persuasive."

Marc A. Fenster of Russ August & Kabat argued for Core Wireless, while Joseph J. Mueller of Wilmer Cutler Pickering Hale and Dorr LLP argued for Apple. Neither immediately responded to a request for comment Thursday afternoon.