$85.23 million for WiLAN against Apple.

Big verdict for WiLAN against Apple $85.23 million in damages – the full amount that the company requested. McKool Smith represented the patentee here. Apple will likely appeal on several grounds.

The jury awarded a royalty of $.45 per iPhone 6 & 7. This is less than 0.1% royalty rate ($650 per iPhone 7) but things add up when you sell 200 million units.

This is the second time around on damages.  The first jury awarded $145,100,000.  However Judge Sabraw gave WiLAN the option of either (1) remitting the damages down to $10 million or (2) holding a new trial on damages.  According to the court the problem stemmed from expert opinions regarding apportionment that were not supported by the evidence.  Even though it was a single-issue jury trial, the judge still provided the jury with 31 pages of jury instructions: Jury Instructions.  Here are a few of the key instructions:

In this case, Wi-LAN seeks a reasonable royalty. A reasonable royalty is defined as the money amount Wi-LAN and Apple would have agreed upon as a fee for use of the invention at the time prior to when infringement began. You must be careful to ensure that award is no more or no less than the value of the patented invention.

The amount you find as damages must be based on the value attributable to the patented technology, as distinct from other, unpatented features of the accused product, or other factors such as marketing or advertising, or Apple’s size or market position. In determining the appropriate royalty base and the appropriate royalty rate, the ultimate combination of both the royalty rate and the royalty base must reflect the value attributable to the patented technology. In other words, the royalty base must be closely tied to the invention. It is not sufficient to use a royalty base that is too high and then adjust the damages downward by applying a lower royalty rate.

Similarly, it is not appropriate to select a royalty base that is too low and then adjust upward by applying a higher royalty rate. Rather, you must determine an appropriate royalty rate and an appropriate royalty base that reflect the value attributable to the patented invention alone. . . .

You may also consider the impact of any available noninfringing alternatives to the asserted claims on the royalty negotiated in the hypothetical negotiation. In doing so, you may consider the value of any differences in benefits and costs between the noninfringing alternatives and the asserted claims.

The two patents at issue in the case are WiLAN’s 8,457,145 and 8,537,757. The patents cover a mechanism for grouping data within queues ranked by required quality-of-service needed with timers associated with each queue. Claim 9 of the ‘145 was infringed (among other claims)

9. A subscriber unit for a wireless communication system, wherein the wireless communication system includes a plurality of subscriber units in communication with an associated base unit, comprising:

a plurality of queues, each queue for grouping data based on the QoS; and

a media access (MAC) module configured to set an initial value for a timer associated with a queue, and periodically, on expiration of the value of the timer, transmit a bandwidth request indicating an amount of bandwidth required for transmitting the data from the queue.


20 thoughts on “$85.23 million for WiLAN against Apple.

  1. 5

    Re this claim requirement of “..each queue for grouping data based on the QoS..” someone else has asked where is QoS in any antecedent expression in this claim, so why is this claim not indefinite?

    1. 5.1

      Fair enough question, and of course the answer could be that if such a (scrivener’s) error were pointed out during prosecution, the correcting amendment would be easy and quite clear.

      1. 5.1.1

        … sometimes improper antecedent basis may cause genuine confusion and sometimes, well, not.

        I think it is pretty clear that this instance is a ‘not.’

    2. 5.2

      I’m sure “quality of service” is very very clearly defined in the specification.


      Note again that the claim covers instances where only two queues are in involved, one with incredible “quality of service” and one with awful “quality of service.”

      Thank goodness for the “unit” that “groups data” “based on” that quality! Super techno. Especially when the claim covers any amount of data (like a phone number, and a paragraph of text about Snoopy).

      And the “module” that estimates how much bandwidth is needed for the data, which must be a supercomputer because just imagine how difficult that calculation must be at the low limits covered by the claim. Also note no limit on the (low) level of accuracy of the estimate that is required to satisfy the claim.

      1. 5.2.1

        MM – unless I am missing something, these claims have already been ruled as not invalid. Is there still a pending validity appeal/challenge at the court or PTAB?


          New, the “missing something” is that “MM” is Malcolm Mooney, and there is not a computing arts claim that he thinks is valid.

          He does not think that innovation protection should be allowed for anything but “objective physical structure” picture claims.

          As you may quickly surmise, his posts of disdain and as hominem lack any legal reasoning (and have done so coming up on 15 straight years with an anniversary this February.

  2. 4

    Jury #1 awards $145.1M. Court says take $10M or negotiate a settlement. Apple doesn’t settle. Jury #2 awards $85.23M, based on $0.45/unit. A jury awarded VirnetX $1.20/unit, while Apple argued $0.01/unit was appropriate. The jury found Apple was off by a factor of 120.

    But Apple’s policy of willful patent infringement still governs. Apple can find no apportionment argument to its liking, and juries routinely reject Apple’s “expert’s” opinions. Just more “gamesmanship” and “delay” as in VirnetX.

    Difficulty of apportionment in iPhone cases is the definition of damages difficult or impossible to determine. Thus, injunctions should be more frequent against Apple, letting the free market determine the proper value of the patented technology. With injunction, force Apple into a real-world license negotiation. Multiple jury trials and multiple appeals are a waste of judicial resources, when the free market should be solving these valuation issues.

    1. 4.1

      … the actual principles of equity that SHOULD be in focus are:

      – make the aggrieved as whole as possible
      – the patent property right is a negative right

      TO THIS END then, some ‘general’ notion that “injunction” is a harsh or too severe a remedy has no touchstone with the actual principles of equity FOR the shared power from the Congress to the Courts, and simply ignores the very context of that shared authority.

  3. 3

    Re: “Apple will likely appeal on several grounds.” ? Didn’t Apple already appeal to the Fed. Cir. in 2016 in this case [albeit only on claim construction]? What other grounds could be appealed at this stage, already the 2d damages trial?

    1. 3.1

      Paul — as we’ve seen in their “throw whatever we can against the wall and see if it sticks” battle with VirnetX, Apple “don’t need no stinking grounds to appeal.”

      Any ol’ thread of “logic” will do jus’ fine.

    2. 3.2

      No, the case is almost 6 years old and they have not even reached a final judgment yet. It will be 7 years by the time the district court is finished. At year 9 they will get a remand from the Federal Circuit. Year 12 they will get a third jury verdict. Year 14 the PTAB will invalidate the patent on behalf of Unified Patents. Year 15 the Federal Circuit will dismiss the case because the patent has been invalidated.

      1. 3.2.1

        Is my impression accurate that the C.D.CA is not a particularly good district for efficient patent suits?


          There is very little difference. VirnetX has been in EDTX “rocket docket” for 9 years against Apple. Our civil justice system is a travesty.

  4. 2

    Pretty ridiculous claim.

    A “unit” (LOL) with two “queues”, and a “module” that starts a timer for each queue and when the timer expires the module transmits a request.

    Sooper techno!!! Amazing that computers can do this. Nobody could have predicted it back in the dark ages of 1998, long before man knew of fire.

    1. 2.1

      I think the Apollo Guidance Computer had that… this “invention” ain’t too obvious.

      “The solution is to assign each process a particular priority, and keep moving the higher priority tasks to the top of your queue. This priority-queue system ushered the age of modern multi-programming and is still used in commercial operating systems.

      Apollo had two separate job queues — The Waitlist and the Executive. Programs would move from the Waitlist to the Executive once the higher priority processes were executed.”

      link to medium.com

    2. 2.2

      While you sniff the claim, please also sniff:

      35 U.S.C. 282 Presumption of validity; defenses.
      (a) IN GENERAL.—A patent shall be presumed valid.

      Then let me know if you have bothered understanding the reference of Sir Thomas More that I have previously set before you.

  5. 1

    Will Apple appeal?

    See VirnetX.

    Will WiLAN ever receive the money they’re entitled to?

    Let’s all meet back here in 2030 to find out.

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