A lawsuit that began nearly seven years ago ended Thursday after jurors determined Apple Inc. did not infringe five wireless technology patents held by Optis Wireless Technology.
Thursday’s decision by jurors in U.S. District Judge Rodney Gilstrap’s courtroom came after four days of trial. Jury selection took place Feb. 6. Optis had been seeking between $400 million and $600 million in damages, according to court documents.
There have been three jury verdicts in this long-running dispute between the companies. The earlier verdicts came Aug. 11, 2020, when jurors hit Apple with a $506.2 million verdict in the form of a royalty, and Aug. 13, 2021, when jurors determined Apple’s infringement meant Optis was entitled to a $300 million lump sum in damages.
After the first trial, Judge Gilstrap granted a motion from Apple for a new trial on damages in an order issued April 14, 2021. And after the second trial, the U.S. Court of Appeals for the Federal Circuit issued an opinion vacating both the infringement finding and the damages award and ordered a third trial.
Judge Gilstrap also entered a sua sponte order Thursday finding that Optis and its affiliated entities that were also plaintiffs in the case are “judicially estopped from asserting that they are entitled to recover pre-suit damages” from Apple. He wrote that throughout the case’s “extensive history,” “one thing has remained constant: plaintiffs have not sought pre-suit damages.”
Until now.
“They have taken the position that the ‘strategic decisions’ they have made ‘are not binding,’” Judge Gilstrap wrote.
But judicial estoppel bars the about-face, he explained in the seven-page order.
Just two days before the third trial, Optis told the court they would be seeking about $600 million in damages, precluding pre-suit damages, which was higher than the $400 million figure they mentioned in voir dire, Judge Gilstrap wrote.
“Plaintiffs’ new and late-breaking position that they should be able to ask the jury in the third trial to award $1.17 billion pursuant to a 2017 damages period start date is squarely at odds with the position that they have consistently maintained for years,” he wrote. “Accordingly, the Court finds that the first element of judicial estoppel — that plaintiffs have asserted a legal position which is plainly inconsistent with a prior position — is met here.”
Additionally, Judge Gilstrap wrote that he had “accepted the plaintiff’s position that they would not seek to recover pre-suit damages,” meeting the second element of judicial estoppel.
“Finally, the totality of plaintiffs’ conduct in this case indicates an intent to play ‘fast and loose’ with pre-suit damages to ‘suit the exigencies of self interest,’” he wrote, quoting the Fifth Circuit’s 2004 opinion in In re superior Crewboats.
“After all, plaintiffs expressly label their failure to pursue pre-suit damages as a ‘strategic decision.’ Such a decision is not inadvertent. Moreover, plaintiffs have repeatedly taken the position that they would not seek presuit damages, waiting until the eve of the Third Trial to declare otherwise,” Judge Gilstrap wrote.
“Plaintiffs’ change in position is nothing less than an ambush. Plaintiffs have hidden their damages theory, giving them a material advantage in trial preparation over Defendant. These facts strongly demonstrate that plaintiffs’ conduct has been intentional. Accordingly, the Court finds that the third element of judicial estoppel — that plaintiffs did not act inadvertently — is met here.”
Optis issued a statement to The Lawbook that it respects the jury’s verdict but is “incredibly disappointed by this outcome.”
“We believe the verdict does not recognize the essential nature of Optis patents which are used in Apple devices to achieve high-speed cellular connectivity,” the statement reads. “In our UK litigation against Apple, all of the asserted Optis LTE patents were the subject of a full review by specialist judges and were all found to be valid, essential and infringed by Apple. We look forward to a further review of the jury’s verdict by the U.S. District Court and Federal Circuit, and we remain fully committed to securing fair and reasonable compensation consistent with FRAND principles.”
Apple is represented by Joseph J. Mueller, Mark D. Selwyn, Alexander J. Nemtzow, Army R. Pearlman, Andrew J. Danford, Ben Ernst, Brittany Amadi, Daniel C. Wewers, James L. Quarles III, Josefina Garcia, Joseph H. Haag, Kathryn Zalewski, Kevin O’Brien, Mindy V. Sooter, Michael J. Summersgill, Machaela P. Sewall, Ravinder Deol and Timothy D. Syrett of Wilmer Cutler Pickering Hale & Dorr and James Underwood and Melissa Smith of Gillam & Smith
Optis is represented by Jason Sheasby, Andrew Strabone, Crawford Wells, Elliot Z. Chen, Hong Zhong, Ke Yang, Kelsey Schuetz, Lisa Glasser, Lucas Oxenford, Rebecca L. Carson and Taylor Hatridge of Irell & Manella, Christopher McNett, Clare Churchman, Erik Fountain, Jennifer Truelove, Sam Baxter and Steven Pollinger of McKool Smith and Jill Bindler of Gray Reed & McGraw.
The case number is 2:19-cv-00066.