Following Apple and Broadcom’s $1.1 billion combined loss in court, the US Solicitor General has asked the Supreme Court to block the pair’s attempt to invalidate Caltech’s patents at the core of the suit.
The California Institute of Technology (Caltech) originally sued Apple and Broadcom in 2016, over infringement of multiple Wi-Fi technology patents. Caltech won the case in 2020, with Apple and Broadcom together being ordered to pay $1.1 billion in damages.
Following that defeat, Apple and Broadcom claimed that there had been “multiple legal errors” in the trial, and called for the result to be overturned. In February 2022, the two firms were denied a retrial over the patent infringements, but were granted a new trial to have the $1.1 billion sum reconsidered.
A trial date for that has yet to be determined but, separately, Apple has also been arguing that Caltech’s patents are invalid. According to Reuters, the Biden Administration has now backed the 2020 finding, and asked the Supreme Court to dismiss Apple’s claims.
US Solicitor General Elizabeth Prelogar said in a court filing that “further review is not warranted,” after a lower court ruled against Apple.
“Apple took full advantage of the review process,” continues Prelogar, “including by conducting discovery, submitting multiple motions, and — after the USPTO ruled against it — unsuccessfully appealing to the Federal Circuit.”
The original case centered on Wi-Fi codes that simplify data encoding and decoding, thereby improving the performance of data transmission. During the course of its subsequent appeals — but not the original trial — Apple argued that there was “prior art” that rended the patents invalid.
“It is undisputed that, at the time Apple filed its petitions for inter partes review, it was aware of certain additional prior-art combinations that it believed provided a basis for invalidating respondent’s patents,” writes the US Solicitor General. “But Apple’s petitions did not identify these additional prior-art combinations as bases for finding the challenged patent claims invalid.”
Referring to the legal terms regarding the presentation of evidence, Prelogar says that “Apple ‘reasonably could have raised’ these grounds during the instituted reviews.”
Apple reportedly says that it “strategically withheld certain arguments” because they largely involved “different permutations” of the prior art that the company did present earlier.
Apple, Broadcom, and Caltech have yet to comment publicly on the US Solicitor General’s recommendation.