By: Stephanie Liao
In Wis. Alumni Research Found. v. Apple, Inc., the U.S. District Court for the Western District of Wisconsin held that the University of Wisconsin-Madison Alumni Research Foundation’s (“WARF”) patent licensing body will not be able to extract triple damages from Apple, Inc. as the jury weighs how much the iPhone maker must pay for using its microchip technology without permission.
WARF is a Wisconsin corporation owned by the University of Wisconsin-Madison’s licensing arm, owner of U.S. Patent No. 5,781,752 (“‘752 patent”). The ‘752 patent titled “Table based data speculation circuit for parallel processing computer,” relates to “out-of-order” processing, a technique for executing instructions in a microprocessor when they are ready for execution, rather than in program order, which is the order in which they appear in memory, according to Apple’s petition. The patent art was developed by Gurindar Sohi, a University of Wisconsin-Madison’s computer science professor, and three of his students. On January 31, 2014, WARF filed suit against Apple alleging infringement of the ‘752 patent. The question to the jury was whether Apple’s A7, A8, and A8X processors – found in the iPhone 5s, iPhone 6, and iPhone 6 Plus, as well as several versions of the iPad – infringed on WARF’s patent. The jury found that it did, concluding that Apple had infringed on WARF’s patented technology. In the on-going attempt to fight patent infringements, WARF filed a second lawsuit against Apple claiming that the A9 and A9X, found in the iPhone 6s and 6s Plus and the forthcoming iPad Pro, also infringed on the patent.
As the court set forth earlier in its summary judgment decision, to establish willful infringement, WARF “must show by clear and convincing evidence” that (1) “the infringer acted despite an objectively high likelihood that its action constituted infringement of a valid patent,” and (2) “this objectively defined risk…was either known or so obvious that it should have been known to the accused infringer.” Apple raised a reasonable defense in the case. During the trial, Apple demonstrated that the elements of the asserted claims of the ‘752 patent were all known in the prior patented art, and many were well known to those who were skilled in it. Apple also relied on its own expert, Dr. Colwell, to argue that a person of ordinary skill would have been motivated to combine Hesson with Steely’s disclosure of a load table. Finally, Apple offered other prior patented art before the U.S. Patent and Trademark Office allowing them to credibly argue that others skilled in the art were thinking about testing and implementing similar concepts.
The Court held that the WARF could not prove that Apple willfully infringed on WARF’s patent. Therefore, Apple no longer risks having the damage award increased by up to three times, which is allowed in federal law for recklessly infringing a patent.
Apple, a tech giant who is worth nearly $700 billion, is unlikely to be significantly affected by such a suit. This case highlights the ongoing struggle for university institutions to protect their patent technology from infringers. However, the ruling and damages rewarded is considered a significant win for WARF. University research institutions have heightened awareness and actively sought patent rights for their research. In 1980, the Bayh-Dole Act was passed, permitting higher education institution to financially benefit from owning the patents they have invented. Since then, university research institutions have increased awareness and actively sought patent protections for their work. However, big tech companies continue to illegally utilize such patents. It remains to be seen if giant technology companies will continue to unlawfully reap the benefits of university innovations.
 Wis. Alumni Research Found. v. Apple, Inc., No. 14-cv-062-wmc 2015 WL 6071063 (W.D. Wis. Oct. 15, 2015).
 Wis. Alumni Research Found. v. Apple, Inc., No. 14-cv-062-wmc 2015 WL 4668247, 1 (W.D. Wis. Aug. 5, 2015).
 Id. at 2.
 Id. at 3.
 Wis. Alumni Research Found. v. Apple, Inc., No. 14-cv-062-wmc 2014 WL 344329 (W.D. Wis. Jan. 31, 2015).
 Wis. Alumni Research Found. v. Apple, Inc., No. 14-cv-062-wmc 2015 WL 5836048 (W.D. Wis. Aug. 28, 2015).
 Wis. Alumni Research Found. v. Apple, Inc., No. 14-cv-062-wmc 2015 WL 6440294 (W.D. Wis. Oct. 13, 2015).
 See No. 14-cv-062-wmc 2015 WL 6071063.
 Id. at 1.
 Id. at 2.
 Hesson Patent is an out-of-order processor that dynamically predicts whether or not a mis-speculation is likely to occur by tracking “history bits” indicating how many times a store instruction has been involved in a mis-speculation.
 Steely Patent describes a processor that executes instruction out of order and uses a prediction to determine whether to allow speculation for LOAD and Store instructions.
 No. 14-cv-062-wmc 2015 WL 6071063 at 2.
 Id. at 3.