Wisconsin Alumni Research Foundation v. Apple Inc., Appeal Nos. 2022-1884, -1886 (Fed. Cir. Aug. 28, 2024)

In its only precedential patent decision last week, the Federal Circuit brought to a close a long-running dispute between the Wisconsin Alumni Research Foundation (WARF) and Apple concerning allegations of infringement of Apple’s A7, A8, A9, and A10 processors. The dispute involved two separate patent lawsuits concerning a single patent. The Federal Circuit affirmed the district court’s ruling that WARF had waived its right to pursue a doctrine of equivalents verdict, and that decision permeated both cases.

WARF sued Apple in 2014. That lawsuit (“WARF I”) accused Apple’s A7 and A8 processors of infringing WARF’s patent. In September 2015, WARF filed a second lawsuit directed at Apple’s A9 processor (“WARF II”). The complaint in WARF II was later amended to include the A10 processor. In briefing, the parties agreed the A9 and A10 processors were not more than colorably different from the A7 and A8 processors in relation to the patent claims. WARF II was stayed pending a final decision in WARF I.

Meanwhile, in WARF I, WARF had been pursuing both literal and doctrine-of-equivalents infringement. Apple indicated its intention to introduce as evidence an Apple patent, which it asserted was relevant to the doctrine-of-equivalents analysis. WARF agreed to drop its doctrine-of-equivalents analysis if Apple agreed not to offer the Apple patent as evidence at trial. The court excluded the Apple patent and limited WARF’s case to literal infringement. The jury found that Apple had infringed. In a 2018 opinion, the Federal Circuit reversed, based on a claim construction issue that rendered the Apple processors as not having literally infringed. We wrote about that decision here.

A briefing schedule was set in both WARF I and WARF II to determine the next steps in both proceedings. In WARF I, WARF sought a new trial based on the doctrine of equivalents. The district court denied that request, finding that WARF had previously abandoned its doctrine-of-equivalents theory. In WARF II, WARF sought to continue the case under a doctrine-of-equivalents theory. The district court rejected that and dismissed the case based on numerous equitable doctrines, including collateral estoppel, judicial estoppel, and the Kessler doctrine. Effectively, the district court’s order ended both cases. WARF appealed.

The Federal Circuit affirmed. First, the Court agreed that WARF had waived its doctrine-of-equivalents theory. WARF strategically abandoned its doctrine-of-equivalents theory, the Federal Circuit reasoned, to avoid allowing certain evidence into trial. In addition, the claim construction decision by the Federal Circuit in the first appeal did not excuse WARF’s failure to preserve its doctrine-of-equivalents theory for trial.

In WARF II, the question was whether the waiver in WARF I served to estop WARF from pursuing its doctrine-of-equivalents theory against the A9 and A10 processors. The Federal Circuit agreed that it did, based on principles of issue preclusion and the Kessler doctrine. WARF argued that literal infringement and equivalents infringement are different “issues,” and thus the test for issue preclusion did not apply; specifically, the “issue” had not been fully litigated in the first action. The Federal Circuit disagreed. The Court held the “issue” was one of patent infringement, and literal infringement and infringement under the doctrine of equivalents were not separate “issues” for preclusion purposes. The issue of patent infringement had been resolved in WARF I, and the processors at issue in WARF II were not colorably different from those that were found non-infringing as a result of WARF I.

The Federal Circuit also affirmed the district court’s application of the Kessler doctrine. We discussed that doctrine at length here. In short, the Kessler doctrine arises from Kessler v. Eldred, 206 U.S. 285 (1907), where Eldred sued Kessler for patent infringement. Kessler was found not to have infringed. Eldred then sued Kessler’s customer for infringement. The Supreme Court held that suit was barred because it had been “settled finally and everywhere . . . that Kessler had the right to manufacture, use, and sell the [accused product].” Thus, the physical product had obtained non-infringing status during the first lawsuit. The Federal Circuit concurred that the doctrine applied here: the A7 and A8 processors had been deemed non-infringing. The doctrine applied not just to the same product, but also subsequent versions if there were no material differences between the accused products in each suit. Under that standard, the Kessler doctrine applied to the A9 and A10 products.

Unless WARF seeks en banc or Supreme Court review, the Federal Circuit’s opinion should fully and finally resolve this nearly decade-old dispute.

The full opinion can be found here.

By Nika Aldrich

This article summarizes aspects of the law and does not constitute legal advice. For legal advice for your situation, you should contact an attorney.