Next Event: Both Apple and Motorola have appealed the dismissal of the case to the Court of Appeals for the Federal Circuit. The Docket Number at CAFC is 12-1548.
Summary: Apple initiated this lawsuit alleging that Motorola has infringed upon three of Apple’s Patents. Motorola filed a Counterclaim alleging that Apple infringes upon six Motorola patents, and Apple expanded its allegation to include fifteen total patents. The case was transferred from the Western District of Wisconsin to the Northern District of Illinois, where Judge Richard Posner took over the case while sitting in designation. After months of motions practice by both parties, Judge Posner ordered both parties to submit reports on damages. After receiving these reports, and hearing oral testimony, Judge Posner dismissed the case, concluding that neither party had presented sufficient evidence of damages to create a triable case or controversy, and that neither party had demonstrated why pecuniary damages are an inadequate remedy. Both parties have appealed the decision to the Court of Appeals for the Federal Circuit, where the case now resides.
Timeline of Important Events:
- October 29, 2010 – Apple files Complaint against Motorola alleging patent infringement of three patents in the Western District of Wisconsin (Filing #1). Apple seeks permanent injunction and treble damages for willful infringement.
- November 9, 2010 – Motorola files Answer and Counterclaim against Apple (Filing #5). Motorola asserts affirmative defenses of invalidity and non-infringement, among others. Motorola’s counterclaims include patent infringement of six Motorola patents.
- December 2, 2010 – Apple files Amended Complaint asserting infringement of fifteen patents (Filing #12). These include the three patents asserted in the original Complaint, and twelve additional patents. Apple seeks permanent injunction and treble damages for willful infringement.
- December 3, 2010 – Apple files Answer to Motorola’s Counterclaim and Affirmative Defenses (Filing #13). Apple asserts affirmative defenses of invalidity and non-infringement. Apple also asserts the affirmative defense of equitable estoppel/unclean hands by arguing that Motorola’s participation in a standard setting organization precludes Motorola from asserting counterclaims on self-declared standard essential patents. Apple asserts invalidity and non-infringement on each Motorola patent in Motorola’s Counterclaim.
- January 15, 2011 – Apple files Amended Answer, Affirmative Defenses, and Counterclaims to Motorola (Filing #50). Motorola files its Amended Answer and Reply on February 11, 2011 (Filing #53).
- March 22, 2011 – Motorola files Answer to Amended Complaint and Counterclaim. (Filing #70). Apple responds on April 15, 2011 (Filing # 82).
- December 1, 2011 – Case transferred from the Western District of Wisconsin to the Northern District of Illinois (Filing #276).
- January 17, 2012 – After a flurry of Motions for Summary Judgment by both parties, Judge Richard Posner enters an Order granting in part and denying in part summary judgment for both parties (Filing #525 and 526). Motorola is left asserting three patents: 5,311,516; 6,175,559; and 6,359,898. Apple is left asserting six patents: 5,519,867; 5,566,337; 5,946,647; 6,343,263; 6,493,002; and 7,479,949. The patents at issue are ultimately narrowed again through another series of motions by both parties, leaving four Apple patents (6,343,263; 6,493,002; 7,479,949; and 5,946,647) and one Motorola patent (6,359,898).
- February 13, 2012 – Apple and Motorola both file Memoranda of Law pertaining to Judge Posner’s Order that each party set forth the proper standard for the determination of damages for patent infringement (Filings #584 and 585).
- March 27, 2012 – Judge Posner orders parties to submit the reports of damages experts by April 2 (Filing #684).
- April 27, 2012 – Judge Posner grants in part Motorola’s Motion for Summary Judgment pertaining to Apple’s 7,479,949 patent (Filing #825).
- June 7, 2012 – Judge Posner announces that he has tentatively decided that the case should be dismissed based on motions filed by the parties regarding damages, injunctive and declaratory relief, and mootness (Filing #1027).
- June 22, 2012 – Judge Posner dismisses the case (Filing #1038). Judge Posner determines that both Apple and Motorola failed to provide sufficient prima facie evidence to create a triable issue relating to the proper amount of damages available for either company’s infringement. Judge Posner also declares that both parties failed to demonstrate that damages would be an inadequate remedy, and thus determines that neither Apple nor Motorola may seek injunctive relief.
- July 20, 2012 – Both Apple and Motorola file Notice of Appeal to the Court of Appeals for the Federal Circuit (Filings # 1044 and 1045).
- September 25, 2012 – CAFC sets briefing schedule (CAFC Filing #33).
- November 5, 2012 – Appellant Apple files Motion to set briefing schedule (CAFC Filing 36).
- November 27, 2012 – Apple files trial brief (Filing #45). The brief argues that Judge Posner erroneously concluded that Apple could not establish damages for Motorola’s infringement, and that Apple has demonstrated irreparable harm because Apple has a policy against licensing patents to competitors and continues to lose market share to an infringing competitor. The brief also challenges the claim limitation at the district court on two Apple patents, and contends that the court misconstrued the terms “analyzer server” and “linking” at claim construction.
- December 4, 2012 – Six briefs for amici curiae are filed with the court. Four amici are from non-market participants: the Federal Trade Commission, the Institute of Electrical and Electronics Engineers, the American Antitrust Institute, and the Intellectual Property Law Association of Chicago. Two other briefs were filed by non-party market participants with many names on each brief, such as Verizon and Hewlett-Packard.