Late last week, California Institute of Technology (Caltech) filed three new complaints in the litigation campaign that resulted in an infringement verdict awarding $1.1B in damages-$837.8M against Apple and $270.2M against Broadcom-in January 2020. One of the complaints is original, asserting five patents against Microsoft (6:21-cv-00276), three tried to the California jury, one at issue in the early days of this campaign, and one new to the litigation. Caltech amended its complaints in November 2020 cases filed against Dell and HP such that all five error-correction coding patents are now asserted against each active defendant. The accused products throughout have been various computer products (e.g., laptops, tablets, thin clients, workstations, etc.) that comply with certain Wi-Fi standards (802.11n, 802.11ac, and/or 802.11ax), targeted for the 12 low-density parity-check (LDPC) codes incorporated in those standards.

Caltech characterizes its five asserted patents (7,116,710; 7,421,032; 7,716,552; 7,916,781; 8,284,833) as the RA patent (the '552 patent), generally directed to "a new class of error correction codes called 'repeat and accumulate codes'", and the IRA patents (the others), purportedly introducing a "new type of error correction codes, called 'irregular repeat and accumulate codes' (or 'IRA codes')". The '710, '032, and '781 patents were tried to a jury in the Apple/Broadcom case, which is now on appeal to the Federal Circuit, with Caltech first asserting those three patents-in-suit, together with the '833 patent, in two lawsuits filed against DISH and Hughes in October 2013 and February 2015. That litigation targeted various products related to satellite broadband, with both suits dismissed with prejudice in May 2016 after apparent settlements on virtually the same day that Caltech filed the case against Apple and Broadcom. A fuller treatment of the campaign can be read at "California Jury Returns $1.1B Infringement Verdict in Caltech Suit Against Apple and Broadcom" (January 2020), with an update on post-verdict events available on RPX Insight here.

Caltech originally accused Dell and HP of infringing only the '710, '032, and '781 patents, but with the filing of its amended complaints, all five are now asserted against Dell, HP, and Microsoft. Per prior RPX coverage, certain claims of the '710, '032, and '781 patents survived an Alice challenge, with Caltech ultimately identifying for trial against Apple and Broadband claims of the patents-claims 20 and 22 from the '710 patent, claims 11 and 18 from the '032 patent, and claims 13 and 22 from the '781 patent-that would actually benefit from the many (and largely unsuccessful) petitions for inter partes review filed challenging them. An order estopped the presentation of certain defenses, Caltech stating that the "upcoming trial will be significantly streamlined" by the defendants' inability to raise those Section 103 defenses.

While the Apple/Broadcom case was litigated in the Central District of California, all three subsequent suits have been filed in the Western District of Texas before Judge Alan D. Albright. In response to Caltech's original complaints, Dell and HP have filed parallel motions to dismiss for inadequately pleading infringement (arguing that the Caltech complaint makes "barebones allegations" that "fail to plead a viable claim for patent infringement because Caltech does not assert that compliance with those Wi-Fi standards necessarily infringes, or even that all Dell products that comply with those Wi-Fi standards are accused"), for failure to allege compliance with marking obligations ("Caltech's Complaint fails to make any such allegation, which is problematic given Caltech's public admission that it has licensed the patents-in-suit to at least Hughes Communications Inc. ('Hughes')", noting that the three patents then in suit expired before the filing of the complaint), and for implausibly pleading exceptionality. The filing of Caltech's amended complaint may moot those motions. (Dell has also filed a motion for a transfer within the Western District, from the Waco Division to the Austin Division.)

Meanwhile, briefing is underway in the Federal Circuit appeal of the $1.1B jury award and subsequent judgment. Characterizing the case as "filled with error at every turn", Apple and Broadcom have focused their appeal on an allegedly erroneous mid-trial construction of a claim term ("repeat"); the refusal to provide the jury with another construction (for the term "variable number of subsets"), "even though the court relied on that construction in its earlier-and also erroneous-§101 ruling"; a contention that no reasonable jury could have returned an infringement verdict (based on the alleged failure of the accused Broadcom chips to satisfy the "repeat regularly" and "sums of bits" claim limitations; the district court's bar against much of the planned invalidity defenses through estoppel based on PTAB proceedings (as noted); and the presentation of an "exorbitant demand" of damages to the jury, which Apple and Broadcom argue that District Judge George H. Wu never should have allowed.

As to that last argument on appeal, the appellants characterize "Caltech's entire damages theory" as assuming "that Broadcom and Apple would have engaged in two separate hypothetical negotiations with Caltech, and would have agreed to wildly different royalty rates- $0.26/unit for Broadcom and $1.40/unit for Apple-to license the same technology in the same Broadcom chips". Per their brief, "[t]hat theory is not only contrary to this Court's precedent and common sense, it is also unsuited to the facts: in the real world, a Broadcom license would have covered Apple's downstream sales as well, and Broadcom was [REDACTED CONTRACT PROVISION] Apple for any infringement arising from its accused chips".

In its March 2021 answering brief, Caltech describes "[m]any of Defendants' arguments" as "fatally waived" but if not waived, as "second-guess[ing] the fact-finding prerogatives of the jury and the discretion of the trial judge". The plaintiff counters the central appellant argument on damages: "While Defendants protest the finding of separate royalty rates for each defendant, Caltech's unrebutted damages testimony properly considered the value of the inventions to each defendant, the real-world patent license most comparable to each defendant's situation, and the nature of each defendant's infringement. No infringing product was subject to more than one royalty".

This litigation is Caltech's only active campaign; however, more litigation involving Caltech assets may be coming. Together with Brown, Columbia, Cornell, Harvard, the University of Illinois, Michigan, Northwestern, Penn, Princeton, SUNY Binghamton, UC Berkeley, UCLA, the University of Southern California, and Yale, Caltech is an initial member of the University Technology Licensing Program (UTLP), which is poised for joint licensing action, offering "innovators more convenient and efficient access to a subset of the universities' inventions, enabling new and valuable products to be brought to market" and as "bring[ing] attention to the many valuable inventions owned by the universities and allows for widespread dissemination of their patented technology, encouraging innovation, and improvements".

As covered more extensively last month, the UTLP announced the launch of its licensing program, outlining the technological areas in which it plans to initially pool patent assets-autonomous vehicles, Internet of Things (IoT), and "Big Data"-a few days after the US Department of Justice (DOJ) issued a favorable business review letter for the program.

As of the publication date of this article, no judge has been assigned to the new case against Microsoft, although assignment to Judge Albright seems likely. 3/19, Western District of Texas.

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