What Apple v. Caltech Means for University Patent Litigation


The US patent system drives the economy, universities provide the fuel, and conduct nearly 60% of all basic research in the US.

Under the Bayh-Dole Act, U.S. universities make inventions, obtain patents, and license those patents for commercialization by private companies. Proceeds generated by patent licensing are reinvested in the university to fund future academic research and innovation.

Thus, university patent litigation affects how smoothly America’s innovation engine runs.

good example

One such case is Apple Inc. v. Caltechpending in the United States Supreme Court.

The High Court recently sought the Attorney General’s opinion on a lawsuit involving Caltech and its Wi-Fi patents. The case is pending in first instance, but Apple and Broadcom challenged the validity of Caltech’s patents in the patent office and lost.

The court of first instance subsequently ruled that Caltech’s patent was not invalid under statutory estoppel doctrine. District Court George Wu barred Apple and Broadcom from raising invalidity claims to jurors.

Caltech wins $1.1 billion jury verdict in patent infringement against Apple and Broadcom. Apple and Broadcom appealed, and the Court of Appeals for the Federal Circuit reversed the jury verdict of infringement and damages and ordered a new trial.

But the Federal Circuit also affirmed Wu’s statutory estoppel decision, thereby validating the Caltech patent.

Apple and Broadcom appealed again, this time to the Supreme Court, arguing that both the trial court and the appellate court erroneously prevented Apple and Broadcom from claiming invalidity during jury trials.

tactical significance

of Apple vs. Caltech This lawsuit is tactically important. This is because accused infringers often challenge the validity of patents in patent office proceedings that occur concurrently with trial proceedings.

This procedure, known as inter partes review, has a reputation for driving up the cost of patent licensing, hating patent owners, and invalidating patents.

If a university patent owner wins an IPR, they generally don’t want to place a second bet on the suspected infringer. Thus, a patent owner who wins in an IPR subsequently argues that statutory estoppel prevents an accused infringer from re-striking validity before a jury.

of caltech Litigation is strategically important because it reasonably limits the opportunity to challenge the validity of a patent, thereby increasing the value of a patent that survives the IPR process.

This is very important for research universities like Caltech. Caltech’s specific mandate under the Bayh-Dole Act is to fund future research by generating patent licensing income.

There is no deadline for U.S. Attorney General Elizabeth Preloger to submit a brief outlining her views on the issue. caltech However, the Office of the Attorney General frequently files multiple complaints in May, allowing the Supreme Court to consider them before the summer vacation, which usually begins in late June.

“It’s interesting to see the Attorney General’s view, but I think the Federal Circuit got it right,” said patent attorney Scott Hejny.

When the Supreme Court decides to make a judgment caltech In that case, a full briefing will be required and oral arguments may not be scheduled until the next semester beginning in October 2023.

This article does not necessarily reflect the opinions of The Bureau of National Affairs, Inc., publishers of Bloomberg Law and Bloomberg Tax, or their owners.

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Alfonso Chan Principal at McKool Smith, handling complex intellectual property litigation and licensing on behalf of universities, research institutes and technology companies.


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