The decision is Optis Cellular Tech., LLC v. Apple Inc., unanimous opinion authored by Judge Prost, joined by Judges Reyna and Stark. Optis asserted five FRAND-committed SEPs related to the ETSI LTE standard. The jury returned a verdict in favor of Apple and initially awarded $506,200,00. The district court granted Apple a new trial on damages, in view of Apple’s objection “that the jury did not hear evidence regarding Optis’s obligation to license the patents on” FRAND terms (p.2; see also p. 19 n.8), after which the jury returned a verdict for $300,000,000. The Federal Circuit vacates the infringement judgment and the second damages judgment, and remands for a new trial on both issues. IT also addresses some of the evidence relating to the damages award.
The principal argument on appeal is that the district court erred by submitting a verdict form to the jury, which posed the following question: “Did Optis prove by a preponderance of the evidence that Apple infringed ANY of the [a]sserted [c]laims?” (p.14). The appellate court agrees with Apple that this question “deprived Apple of its right to a unanimous verdict on each legal claim against it related to infringement,” (p.15), because “[a]s long as each juror believed some claim of some patent was infringed, the jury was required to answer “Yes”—even if the various jurors believed that Apple was infringing a different asserted patent. In other words, the question whether Apple infringed “ANY” of the asserted claims erroneously required an affirmative answer even in a situation where all jurors did not agree that the same patent was being infringed” (p.15, boldface and italics in original). The court further rejects Optis’ arguments that “the jury instructions’ and the verdict form’s reference to unanimity,” and that the amount of the initial jury verdict “corresponded exactly to the sum of the five numbers that Optis’s damages expert gave as the measure of damages for each patent,” resolve the unanimity problem (pp. 17-18). For these reasons, the court vacates the infringement judgment as well as the $300,000,000 damages judgment (pp. 19-20).
In a footnote, the court notes last month’s decision of the Court of Appeal for England and Wales awarding Optis a global royalty, in the amount of $502 million (plus interest and fees), for a portfolio of patents including the five at issue in this case (see previous discussion on this blog here). The Federal Circuit writes:
In its opinion, the English Court of Appeal summarizes the parties’ position in the case currently before this court:
Apple’s position on the US appeals is that the second jury verdict should be set aside and Optis should be awarded nothing. Optis’s position is that the first jury verdict should be reinstated. Thus there are, broadly speaking, three possible outcomes: (i) Optis get[s] nothing; (ii) Optis get[s] $300 million for the past and future; and (iii) Optis get[s] $506.2 million for the past.
Id. ¶ 210. It also stated that, “[f]or present purposes . . . [the English Court of Appeal is] assuming that it will be maintained by the [U.S. Court of Appeals for the Federal Circuit] to the extent that one of the two jury awards is upheld. Comity dictates that the English courts should not interfere with such a judgment save for compelling reasons, but there is no compelling reason in the circumstances of this case.” Id. ¶ 258. On May 30, 2025, the English Court of Appeal issued an Order and annexed license. ECF No. 98 at 1. It then issued a corrected version of the Order on June 2, 2025. ECF No. 98 at 1. Based on our conclusions here—that both the infringement and second damages judgments are vacated and the original verdict of $506,200,000 is not reinstated—we do not know how this opinion affects the English Court of Appeal’s decisions (pp. 20-21 n.9).
I’m not entirely sure either. Lord Justice Arnold also stated in the EWCA decision that “the least-worst solution to the problem which Apple has caused”—not agreeing to abide by the English courts’ determination of a global license until after the E.D. Texas proceedings were underway—"is for the US final judgment to be treated as a floor for the royalties payable by Apple under the licence determined by the English courts in the manner proposed by Optis,” meaning that “Optis retains whatever sum is awarded in the US and, to the extent that the total global royalty payment held to be FRAND in these proceedings exceeds the final US judgment sum, Apple should pay Optis the balance” (see EWCA decision paras. 244, 257). If I’m understanding this correctly, the premise of the EWCA decision was that Optis would ultimately be entitled to $502 million (plus interest and fees), total, as a global royalty, the only question being what portion would be attributable to the U.S. litigation. But with the U.S. verdict being vacated and remanded, we still don’t know what a U.S. trier of fact would award for the five patents in suit—a matter that is further complicated by the Federal Circuit's conclusion that two claims of one of the asserted patents might be invalid on patentable subject matter grounds, and that one claim of one of the other patents was (contrary to the district court's view) a means-plus-function claim, such that the validity of all three of these challenged claims needs to be reassessed on remand (pp. 22-32). But if Optis has effectively consented to a maximum award of $502 million (plus interest and fees) for a global license, would a U.S. damages retrial be moot? Has Apple requested leave to appeal the EWCA decision to the UKSC? Is there any possibility that on retrial in the U.S. the award could be greater than $502 million?
A final damages issue (I’ll skip the substantive issues noted above) is whether the district court abused its discretion in letting Optis’ expert testify about the terms of a 2019 settlement between Apple and Qualcomm. Short answer, yes:
The Apple-Qualcomm settlement agreement is not the most reliable license in the record, and its probative value appears minimal. The scope of the patent rights under the settlement agreement was far greater than the hypothetical license to the five asserted patents in this case, and the agreement settled global litigation between Apple and Qualcomm, including matters spanning patent, antitrust, tortious-interference, and trade-secret claims. [Optis expert] Mr. Kennedy failed to meaningfully account for these differences in scope. Moreover, Mr. Kennedy opined that the settlement agreement is “informative and would be a consideration for [Optis] in the [h]ypothetical [n]egotiation,” but that “[n]one of the Apple licenses here are sufficiently comparable to the [h]ypothetical [l]icense for use as a direct indication of a reasonable royalty rate.” J.A. 7512 (¶ 416) (emphasis modified).
Additionally, it was highly prejudicial to Apple for Optis (and Mr. Kennedy) to repeatedly recite the large settlement figure given “the probative value of the [Apple-Qualcomm settlement agreement] is dubious.” LaserDynamics, 694 F.3d at 78. In fact, Optis posted the large settlement figure on trial slides and emphasized the dollar amount to the jury several times. . . . Accordingly, the provative value of the Apple-Qualcomm settlement agreement and Mr. Kennedy’s testimony concerning the same is substantially outweighed by the risk of unfair prejudice . . . (pp. 35-36).
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