Wisconsin Alumni Research Foundation v. Apple, Inc.

140 F. Supp. 3d 791, 2015 U.S. Dist. LEXIS 140633, 2015 WL 6071063
Procedural entryThis page is a short order in Wisconsin Alumni Research Foundation v. Apple, Inc.. Read the opinion of the Court — 261 F. Supp. 3d 900
District Court, W.D. Wisconsin·Decided October 15, 2015·No. No. 14-cv-062-wmc·Published

Opinion

OPINION AND ORDER

WILLIAM M. CONLEY, District Judge.

Defendant Apple, Inc. previously sought summary judgment on plaintiff Wisconsin Alumni Research Foundation’s willful infringement claim on the basis that WARF cannot show by clear and convincing evidence that Apple “acted despite an objectively high likelihood that its actions constituted infringement of- a valid patent.” In re Seagate Technology, LLC, 497 F.3d 1360, 1371 (Fed.Cir.2007) (en banc). “In that opinion and order, the court denied Apple’s motion with respect to- certain defenses, but reserved on remaining bases— including Apple’s obviousness defense and various non-infringement theories — pending a more robust demonstration of the merits of Apple’s defenses and WARF’s infringement claims at .trial.” (8/6/15 Op. & Order (dkt. # 193) 43.)

Having now had the benefit of hearing the evidence on infringement and' invalidity during the liability phase of the trial, as well as reviewing the parties’ submissions on willful infringement (Pl.’s Proffer (dkt. #587); Def.’s Resp. (dkt. #606)), the court finds that Apple’s obviousness defense was objectively reasonable, albeit unsuccessful. Accordingly, the court will enter judgment in Apple’s favor on WARF’s willful infringement claim.

OPINION

As the court set forth in its summary judgment decision, to establish willful infringement, WARF “must show by clear and convincing evidence” that: (1) “the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent,” and (2) “this objectively-defined risk ... was either known or so' obvious that it should have been known to the accused infringer.” In re Seagate Tech., 497 F.3d at 1371. The first of these elements — an “objective determination of recklessness” — is a question for the court, not the jury. Bard [793]*793Peripheral Vascular, Inc. v. W.L. Gore & Assocs., Inc., 682 F.3d 1003, 1006-07 (Fed. Cir.2012).

“[T]he ‘objective’ prong of Seagate tends not to be met where an accused infringer relies on a reasonable defense to a charge of infringement.” Id. at 1005-06 (internal citation and quotation marks omitted); see also Spine Solutions, Inc. v. Medtronic Sofamor Danek USA, Inc., 620 F.3d 1305, 1319 (Fed.Cir.2010) (overturning jury’s finding of willful infringement, finding that defendant raised a “substantial question as to the obviousness” of the patent in suit); Ameritox, Ltd. v. Millennium Health, LLC, No. 13-CV-832-WMC, 2015 WL 1866085, at *2 (W.D.Wis.. Apr. 17, 2015) (finding objective prong not met where defendant had raised “substantial question” with respect to obvipusness defense); Douglas Dynamics, LLC v. Buyers Products Co., 747 F.Supp.2d 1063, 1112 (W.D.Wis.2010) (granting summary judgment on willful infringement claim where there was “reasonable difference of opinion” and a “close question”). Even resolving all evidentiary disputes and reasonable inference in WARF’s favor, it has failed to show by clear and convincing evidence that Apple acted despite an objectively high likelihood that its actions constituted infringement of a valid patent.

Apple demonstrated at trial that the elements of the asserted claims of the '752 patent were all known in the prior art, and many were well-known for those skilled in the art. Indeed, WARF did not meaningfully dispute this.1 As a result, the only factual dispute as to Apple’s obviousness defense was whether a person of ordinary skill in the art would have combined those elements and had a reasonable chance of doing so successfully.

In particular, Apple argued that all of the asserted claims of the '752 patent were obvious over Hesson in view of Steely. Hesson discloses an out-of-order processor that “dynamically predicts]” whether or not a mis-speculation is likely to occur by tracking “history bits” indicating how marly times a store instruction has been involved in a mis-speculation. (DX 770.) WARF’s expert Trevor Mudge conceded at trial that the only limitation missing from Hesson with respect to asserted claims 1 and 9 was that Hesson was associated with store (as opposed to load) instructions. (Déf.’s Resp. (dkt. #606) 5 (citing trial transcript).) Relying on its own expert, Dr. Colwell, Apple further argued that a person of ordinary skill would have been motivated to combine Hesson with- Steely’s disclosure of a load table. (Id.) Finally, Apple offered other prior art not before the PTO allowing them to credibly argue that others skilled in the art weré thinking about testing and implementing similar concepts.

While the jury. ultimately rejected this argument — no doubt in part because of the investment in computer software simulations, and time and effort required to confirm that the '752 patented invention would prove valuable in practice sometime in the future when processing speeds had increased by a factor of 10 or more — the court finds that Apple nevertheless raised a. substantial question with respect to the validity of the '752 patent. In no way does this finding upend the jury’s rejection of defendant’s obviousness claim. On the contrary, the jury had a sound basis for finding that the inventors of the '752 patent should be given credit for taking the additional, step of combining known elements.

[794]*794The Federal Circuit routinely finds that the objective prong of the willful infringement claim is not met where the defendant’s obviousness claim rests on the combination of known elements. For example, the Federal Circuit recently observed in Halo Electronics, Inc. v. Pulse Electronics, Inc., 769 F.3d 1371 (Fed.Cir.2014), cert. denied, — U.S. -, 136 S.Ct. 236, 193 L.Ed.2d 132 (2015) (No. 16-121), the following:

The record shows that although Pulse was ultimately unsuccessful in challenging the validity of the Halo patents, Pulse did raise a substantial question as to the obviousness of the Halo patents. Pulse presented evidence that the prior art disclosed each element of the asserted claims, that it would have been predictable to combine and modify the prior art to create the claimed electronic packages, and that there were differences between the prior art considered by the PTO and the prior art introduced at trial.

Id. at 1382-83 (internal citation omitted). Similarly, in Spine Solutions, Inc., 620 F.3d 1305, the Federal Circuit affirmed the district court’s rejection of the plaintiffs willful infringement claim reasoning that:

Medtronic raised a substantial question as to the obviousness of the '071 patent. The combination of the '477 patent and Nobuo plainly discloses all of the claimed limitations. Although we hold that the record contains substantial evidence to support the jury’s implicit finding that one of skill in the art would not have found the combination obvious, Medtronic was not objectively reckless in relying on this defense.

Id. at 1319.

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Wisconsin Alumni Research Foundation v. Apple, Inc., 140 F. Supp. 3d 791, 2015 U.S. Dist. LEXIS 140633, 2015 WL 6071063 (W.D. Wis. 2015).

140 F. Supp. 3d 791 (Wisconsin Alumni Research Foundation v. Apple, Inc.) — published by Counsel Stack Legal Research, free access to 12M+ legal documents.

Related

In Re Seagate Technology, LLC
497 F.3d 1360 (Federal Circuit, 2007)
Douglas Dynamics, LLC v. Buyers Products Co.
747 F. Supp. 2d 1063 (W.D. Wisconsin, 2010)
Halo Electronics, Inc. v. Pulse Electronics, Inc.
769 F.3d 1371 (Federal Circuit, 2014)
Innovention Toys, LLC v. Mga Entertainment, Inc.
611 F. App'x 693 (Federal Circuit, 2015)
Ameritox, Ltd. v. Millennium Health, LLC
101 F. Supp. 3d 800 (W.D. Wisconsin, 2015)