The California Institute of Technology v. Broadcom Ltd. et al.

Patent infringement

Central District of California

U.S. District Judge George H. Wu

$1.1 billion

James Asperger

Plaintiff's Lawyers: Quinn Emanuel Urquhart & Sullivan LLP, James R. Asperger, William C. Price, Kevin P.B. Johnson, Todd M. Briggs, Brian P. Biddinger, Rachael L.B. McCracken, Edward J. DeFranco, Victoria F. Maroulis, Charles M. Stiernberg Jr., Deepa Acharya, Derek L. Shaffer, Heather E. Belville, Jordan R. Jaffe, Kathleen M. Sullivan, Margaret Shyr, Ognjen Zivojnovic, Ron Hagiz, Seung Woo Hur; Valerie Roddy, Zhaoxin Yin

Defense Lawyers: Wilmer Cutler Pickering Hale and Dorr LLP, James M. Dowd, Mark D. Selwyn, Joseph J. Mueller, Aaron S. Thompson, Mary V. Sooter, Michael H. Smith, Richard A. Goldenberg; James L. Quarles III, Jason F. Choy

At the beginning of 2020, Quinn Emanuel Urquhart & Sullivan LLP partners proved once again why they are formidable trial lawyers in high-stakes cases worth billions.

This time, they fought -- and won -- $1.1 billion in a patent infringement lawsuit for some of the most influential academic researchers and technology innovators in the world at The California Institute of Technology.

The jury trial, which concluded in January 2020, pitted the university against Broadcom Ltd. and Apple Inc. for infringement of Wi-Fi coding technologies. The California Institute of Technology v. Broadcom Ltd. et al. 16-CV03714 (C.D. Cal., filed May 26, 2016).

The winning team included James R. Asperger, William C. Price, Kevin P.B. Johnson, Todd M. Briggs, Brian P. Biddinger and Rachael L. McCracken. The plaintiffs alleged a number of CalTech's Wi-Fi-related inventions were patented as far back as 2000.

The team that represented Broadcom and Apple at trial are attorneys from Wilmer Cutler Pickering Hale and Dorr LLP: James M. Dowd, Mark D. Selwyn, Joseph J. Mueller, Aaron S. Thompson, Mary V. Sooter, and Michael H. Smith, who is now an attorney with the Federal Trade Commission's Technology Enforcement Division.

William Price

Defense counsel could not be reached for comment.

In an opening brief to the U.S. Court of Appeals for the Federal Circuit in December, attorneys for the companies wrote the $1.1 billion award "cannot stand, as this case was filled with error at every turn."

William F. Lee, a WilmerHale partner, questioned CalTech's damages model and said the trial judge made errors by prohibiting Broadcom and Apple from pursuing key defenses.

"These rulings unfairly prejudiced Appellants and greatly hampered their ability to rebut CalTech's repeated emphasis at trial on the supposed importance of the patents-in-suit, which led to an enormous -- and unwarranted -- damages award," Lee wrote.

Asperger had a long-running relationship with CalTech's researchers, including inventor Robert McCleese. When the situation with Broadcom arose, CalTech enlisted the help of Quinn Emanuel, who agreed to look at the university's patent portfolio.

"CalTech are on the cutting edge of everything, and they come up with so many innovations and inventions that changes the world decades ahead of their time," Asperger said. "CalTech is so far ahead of their time that the patent may not be realized until after it expires. But they're not looking for people to sue ... Most of these professors don't even follow what's going on in the industry."

CalTech's claims against Broadcom and Apple centered on its Wi-Fi error correction code that allows companies to send data over Wi-Fi as fast as it can without errors from bad signals and pixelation. University researchers and McCleese came up with a way to ensure the data can be sent without errors.

At the time they invented the code decades ago, it wasn't as pertinent in technology because there was no device that had the capability to send that much data at a time until mobile devices became essential.

The defendants tried everything they could to knock out CalTech's patents, but Quinn Emanuel's team knocked out their defenses by the time the case went to trial.

An interesting development during trial occurred when the defendants hired two separate experts to testify that the technology Apple and Broadcom used was nothing like CalTech's inventions, said Price, who handled cross examinations of both witnesses with Johnson.

Both experts testified on the stand they reached their respective opinions independently.

"One thing that stuck out was, they did these long expert reports that looked identical, but it defied logic that they came up with this by themselves," Price recalled.

"They each had a paragraph that admitted a key element [of] their invention did use a step of our invention," he added. "Then, before trial, they each corrected that very same paragraph to say something else. I don't think I'd ever seen that before."

Johnson said it gave the team a chance to challenge the defendants' credibility before the jury.

Price and Johnson's skilled cross examination unraveled Apple and Broadcom's cases, as Johnson got an Apple expert to admit he was hired as the company's expert in several other cases and continuously worked for Apple as a consultant for several years. Price did the same for Broadcom's expert witness.

"So, he wasn't very independent," Johnson said. "When you combine the cross examination and his admissions from the report, and showed both reports had the same paragraphs that were copied, I think the jury was left with the firm belief that these guys weren't independent."

The defendants brought a motion for a new trial and a motion for judgment notwithstanding the verdict.

But the verdict was affirmed in a final order in May 2020. U.S. District Judge George Wu of the Central District of California also ordered an additional $75 million in damages to be paid to CalTech for interest accrued and initial running royalties, as the university would be entitled to extra royalties that would be determined after appeal.

"This was four years of incredibly hard-fought litigation. Apple and Broadcom threw everything at us they could, and we knew from day one from the first meetings with CalTech that this was a great invention and changed the world for consumers, not just in smartphones but all other devices," Asperger said.

"We work together selflessly as a team, and everyone is there for the best outcome for the client, and this was just a fabulous team that worked together so well and there were so many contributions at all levels," he added.

Representing CalTech was a privilege for the team, the attorneys said, as it was important to know the university's academic reputation and relay its accomplishments into a complete story for the jury.

"I'm incredibly proud of our team and our efforts every step of the way," Johnson said. "We had that in mind with every brief we wrote, every appearance we made in court to remember CalTech, and that its reputation not be diminished or diluted."

Price added: "It really enforced my beliefs when I tell clients that juries do get it right. They usually do. When you present facts in a fair way, they come to the right decision. Having CalTech as a client is special."

-- Gina Kim