Judge William M. Conley denied the Wisconsin Alumni Research Foundation’s bid to reopen its claim of infringement under the doctrine of equivalents, in which a party can be held liable even when the disputed invention doesn’t fall within the literal scope of a patent claim.
Its “decision to abandon its doctrine of equivalents claim cannot be traced to any decision by this court found to be in error on appeal,” Conley wrote Tuesday for the US District Court for the Western District of Wisconsin.
A federal jury in 2015 ordered Apple to pay $234 million. The judge added more damages, royalties, and interest to bring the final judgment to $506 million. The US Court of Appeals for the Federal Circuit overturned the judgment in September 2018, finding that “no reasonable juror could have found infringement” of the patent.
The dispute also includes a case WARF filed over the same patent, allegedly infringed by Apple’s iPhones and iPads that contain more recent computer chips with an “LSD Predictor,” in the month before that trial.
Conley denied as moot WARF’s requests for a status conference on its bid for a new trial under the doctrine-of-equivalents claims, which WARF had said it filed “because the scope of the Federal Circuit’s decision relates only to literal infringement.” WARF had said it requested the conference “because no theory of preclusion or estoppel resolves WARF’s doctrine of equivalents claims.”
At the time, Apple said that WARF’s “attempt to reopen those issues” was blocked “under well-established principles of preclusion, waiver, and estoppel.”
Conley agreed, saying WARF “abandoned its doctrine of equivalents theory in response to Apple’s agreement not to introduce its newly-acquired patent on a LSD Predictor despite the patent-in-suit to demonstrate that the accused technology was separately patentable and, therefore, not equivalent.”
The US Supreme Court in October 2019 refused to revive the suit.
WARF is represented by Irell & Manella LLP and Godfrey & Kahn SC. Apple is represented by Wilmer Cutler Pickering Hale & Dorr LLP, Cetra Law Firm LLC, and Goldman Ismail Tomaselli Brennan & Baum LLP.
The case is Wisc. Alumni Rsch. Found. v. Apple Inc., W.D. Wis., No. 3:14-cv-62, opinion issued 5/10/22.