Federal Circuit Denies New Trial for WARF in Apple Patent Cases

The Federal Circuit has upheld two district court judgments in favor of Apple, finding that the Wisconsin Alumni Research Foundation (WARF) had 1) abandoned its doctrine-of-equivalents theory and 2) that a second suit for alleged infringement of the same patent by next-generation Apple products was barred by the previous decision.

The case began more than ten years ago and involves a patent that has long since expired.

WARF’s ’752 patent was filed on December 26, 1996, and issued on July 14, 1998. It’s titled “Table Based Data Speculation Circuit for Parallel Processing Computer” and is directed to “[a] predictor circuit [that] permits advanced execution of instructions.”

WARF first sued Apple in 2014. The complaint accused the Load-Store Dependency Predictor (“LSD Predictor”) in Apple’s A7 and A8 processors of infringing the ’752 patent.

In WARF II, WARF accused Apple’s A9 and A10 processors of infringing the same patent.

WARF originally pursued both a literal and doctrine-of-equivalents theory of infringement in WARF I.

Literal infringement occurs when a defendant directly and literally copies or replicates every element of a patented claim. I.e., the defendant’s product or process matches the exact specifications stated in the patent claims.

Under the doctrine of equivalents, patent infringement can also occur when a defendant’s product or process performs substantially the same function, in substantially the same way, to achieve substantially the same result as the patented invention, even if there are differences in the details.

During trial,

WARF moved to exclude Apple’s noninfringement defense as inconsistent with the plain and ordinary meaning of “particular.” The district court denied WARF’s motion “because Apple’s non-infringement argument . . . was consistent with the plain meaning of ‘particular’ as contemplating association with a single load instruction.”

In WARF I, the jury found Apple’s A7 and A8 literally infringed the ’752 patent. Apple appealed, arguing no reasonable jury could find Apple literally infringed under the plain and ordinary meaning of “particular” as used in the asserted claims.

Apple argued that no reasonable jury could find that Apple’s accused products literally infringed because, among other reasons, Apple’s LSD Predictor did not “produce a prediction associated with the particular [load] instruction.” Instead, noted the court,

Apple explained that the plain and ordinary meaning of ‘particular’ meant that the claimed ‘prediction’ must be associated with a single load instruction (i.e., one and only one load instruction), rather than with a group of load instructions.

The Federal Circuit agreed and reversed the judgment, explaining

that “the plain meaning of ‘particular,’ as understood by a person of ordinary skill in the art after reading the ’752 patent, requires the prediction to be associated with a single load instruction. A prediction that is associated with more than one load instruction does not meet this limitation.”

On remand, WARF tried to reassert infringement claims against A7 and A8 under the doctrine of equivalents. The district court denied that request based on WARF’s prior affirmative abandonment of that theory.

WARF argued that it “did not and could not have waived” its doctrine-of-equivalents theory in WARF I. It argued that it “believed Apple literally infringed” under the plain and ordinary meaning of “particular,” and such claim construction “did not require” a doctrine-of-equivalents theory.

Instead, WARF argued that Apple had waived a claim construction for the term “particular” in WARF I, that WARF relied on this alleged waiver of a narrower claim construction for the term “particular” in deciding that “it could present only literal infringement at the 2015 trial,” that the narrower construction of “particular” “became relevant only after appeal,” and that the narrower construction “foreclosed literal infringement.”

Apple countered that

WARF made the strategic choice to abandon its [doctrine of equivalents] theory in order to prevent Apple from introducing evidence of Apple’s own patent during the trial’s liability phase.

The federal circuit agreed with the district court that WARF waived its doctrine-of-equivalents theory in WARF I, concluding that (1) no change in the claim construction excused WARF’s failure to present its doctrine-of-equivalents theory to the jury in WARF I; (2) WARF affirmatively abandoned that theory for strategic purposes unrelated to claim construction.

WARF attempted to continue WARF II against A9 and A10 under the doctrine of equivalents. But the district court found that WARF I precluded WARF from proceeding in WARF II.

As the federal circuit described the situation,

WARF essentially asks this court to allow WARF to relitigate WARF I under a doctrine-of-equivalents theory that would have been available and realistically useful to it in WARF I in essentially the same form as it is today.

The court found that “WARF’s abandonment of the doctrine of equivalents forecloses this result.”

The Federal Circuit found that the district court did not err in finding that WARF waived its doctrine-of-equivalents theory in WARF I, and therefore, it affirmed the denial of WARF’s motion for a new trial.

The court noted that

Issue preclusion, sometimes called collateral estoppel, requires that “(1) the issue sought to be precluded is the same as that involved in a prior action; (2) the issue was actually litigated; (3) the determination of the issue was essential to the final judgment, and (4) the party against whom estoppel is invoked was represented in the prior action.”

WARF defined the issue in WARF I as “whether Apple’s A7 and A8 processors literally infringe the ’752 patent” and the issue in WARF II as “whether Apple’s A9 and A10 processors infringe the ’752 patent under the [doctrine of equivalents].”

Apple defined the issue as the same in both cases—“whether Apple’s accused products infringe the ’752 patent.”

The court noted that

Issue preclusion may apply and bar a second litigation, even where the products are different from the first litigation, under “limited circumstances where it is shown that a close identity exists between the relevant features of the accused device and the device previously determined to be non-infringing such that they are essentially the same.”

The court concluded that there was no clear error in the district court’s finding that the LSD Predictors in the A7/A8 and the A9/A10 processors are essentially the same.