Untitled case

This case, 1:12-cv-24318 in the Southern District of Florida, is a patent infringement litigation initiated by Wi-LAN USA, Inc. and Wi-LAN, Inc. (collectively, "Wi-LAN") against Apple Inc. ("Apple"). Wi-LAN is a Canadian company that has been solely in the business of acquiring and asserting patents since 2006, indicating its role as a Non-Practicing Entity (NPE) or Patent Assertion Entity (PAE). Apple Inc. is a well-known American multinational technology company that designs, manufactures, and markets consumer electronics, computer software, and online services, making it an operating company and the accused infringer. The lawsuit alleges that Apple infringes U.S. Patent No. 8,311,040, along with U.S. Patent No. 8,315,640, which are identified as being related to LTE/LTE-A Standard Essential Patents (SEPs).

The patent at issue, US Patent 8,311,040, is titled "Method and apparatus for bandwidth request/grant protocols in a wireless communication system." It describes technology related to managing bandwidth allocation and request/grant protocols within broadband wireless communication systems, including adaptive time division duplexing (TDD) and frequency division duplexing (FDD) systems. This patent broadly covers aspects of efficient data transmission in wireless networks. The accused products or technologies are Apple's devices that implement LTE/LTE-A wireless communication standards, though specific products are not detailed in the initial search results.

The procedural posture of the case began in the United States District Court for the Southern District of Florida, with Judge K. Michael Moore assigned. However, the case was later transferred to the United States District Court for the Southern District of California on April 2, 2013, where it was assigned case number 3:13-cv-00798. This transfer suggests that the Southern District of Florida was not ultimately deemed the most appropriate venue for this particular litigation. The case is notable as it involves a prominent NPE, Wi-LAN, asserting standard-essential patents against a major technology operating company, Apple, impacting the highly competitive mobile communications industry. Such cases often have broader industry implications, especially concerning licensing of essential wireless communication technologies.

Here are the key legal developments and outcome for the patent infringement litigation involving U.S. Patent 8,311,040 (and initially 8,315,640) in case 1:12-cv-24318.

Key Legal Developments and Outcome:

• Filing & Initial Pleadings (Florida Southern District Court):

  • Complaint Filed (2012-12-06): Plaintiffs Wi-LAN USA, Inc. and Wi-LAN, Inc. filed a patent infringement lawsuit against Apple Inc. in the U.S. District Court for the Southern District of Florida, case number 1:12-cv-24318. The complaint asserted infringement of U.S. Patent Nos. 8,311,040 and 8,315,640.

• Pre-trial Motions of Substance (Florida Southern District Court - Transfer):

  • Motion to Transfer Venue Granted (2013-04-02): Defendant Apple Inc. filed a renewed motion to transfer venue to the United States District Court for the Southern District of California. The motion was granted by Judge K. Michael Moore, and the case was transferred.

• Case Transferred to Southern District of California:

  • Following the transfer, the case was re-docketed in the U.S. District Court for the Southern District of California under case number 3:13-cv-00798.

• Further Developments in Southern District of California (3:13-cv-00798):

  • (Information on answer, counterclaims, Markman, discovery, summary judgment, trial, verdict, post-trial motions, or final judgment for case 3:13-cv-00798, beyond its initial transfer, could not be found with the provided search results. A direct search of the PACER docket for 3:13-cv-00798 would be necessary for these details).

• Parallel PTAB IPR/PGR Proceedings:

  • A search of the PTAB P-TACTS system using patent number 8,311,040 did not readily yield any active or completed IPR or PGR proceedings specifically involving Wi-LAN and Apple related to this patent. (Direct access to the P-TACTS system and a detailed search for IPRs filed against US8311040 by any party would be needed to definitively confirm the absence or presence of IPRs).

Current Posture:

Based on the available information, the case was transferred from the Southern District of Florida to the Southern District of California in April 2013. The subsequent developments and ultimate outcome of the case in the Southern District of California (3:13-cv-00798) are not detailed in the provided search results. There is no information regarding a settlement, dismissal, judgment, or appeal as a final disposition, nor specific details about claim construction or other substantive motions in the transferee court.## Case 1:12-cv-24318: Key Legal Developments and Outcome

This case, initially filed in the Florida Southern District Court under case number 1:12-cv-24318, involved patent infringement allegations concerning U.S. Patent 8,311,040. The litigation underwent a significant early development with its transfer to another jurisdiction.

Legal Developments

1. Filing & Initial Pleadings (Florida Southern District Court)

• Complaint Filed (2012-12-06): Wi-LAN USA, Inc. and Wi-LAN, Inc. (Plaintiffs) filed a patent infringement complaint against Apple Inc. (Defendant) in the U.S. District Court for the Southern District of Florida. The complaint asserted infringement of U.S. Patent Nos. 8,311,040 and 8,315,640.

2. Pre-trial Motions of Substance

• Motion to Transfer Venue Granted (2013-04-02): Apple Inc. filed a renewed motion to transfer venue. Judge K. Michael Moore of the Florida Southern District Court granted this motion, transferring the case to the United States District Court for the Southern District of California. The court considered factors such as the convenience of witnesses, the location of relevant documents, convenience of parties, and the locus of operative facts. The new case number in the Southern District of California became 3:13-cv-00798.

3. Subsequent Developments in Southern District of California (Case No. 3:13-cv-00798)

• Specific details regarding the filing of Apple's answer and counterclaims, subsequent substantive motions (such as motions to dismiss, for summary judgment, or stays pending IPR), claim construction (Markman) outcomes, or detailed discovery milestones within the transferee court (Southern District of California) are not available in the provided search results.

4. Trial Events, Verdict, and Post-Trial Motions

• Information concerning whether the case proceeded to trial, any resulting verdict, or post-trial motions (such as JMOL or new trial) in the Southern District of California court (3:13-cv-00798) is not found in the provided search results.

5. Settlement, Dismissal, Judgment, or Appeal

• The final disposition of the case, including any settlement, dismissal, judgment, or appeal from the Southern District of California, is not detailed in the available information.

6. Parallel PTAB IPR/PGR Proceedings

• A search of the Patent Trial and Appeal Board (PTAB) databases for Inter Partes Review (IPR) or Post-Grant Review (PGR) proceedings related to U.S. Patent 8,311,040 did not yield specific results concerning proceedings initiated by or against Wi-LAN or Apple related to this patent.

Outcome

The primary outcome established from the provided information is the transfer of the case from the Southern District of Florida to the Southern District of California on April 2, 2013. The subsequent developments and final resolution of the litigation in the Southern District of California (case number 3:13-cv-00798) are not publicly detailed in the gathered search results.

The case 1:12-cv-24318, originally filed in the Southern District of Florida, was transferred to the Southern District of California as case number 3:13-cv-00798. Wi-LAN USA, Inc. and Wi-LAN, Inc. (collectively, "Wi-LAN") are represented by external counsel in their patent infringement cases. Wi-LAN itself also employs in-house patent counsel to manage its patent portfolios and litigation, working with external counsel.

Based on publicly available information regarding related Wi-LAN v. Apple litigation, the following firms and attorneys have represented Wi-LAN:

Lead Counsel:

• Mike McKool (Lead Trial Counsel)
  • Firm: McKool Smith PC (Dallas, TX office likely, given firm chairman status)
  • Experience Note: Founder and Chairman of McKool Smith, consistently recognized as a leading trial lawyer with over 100 jury trials, including significant patent infringement verdicts for Wi-LAN against Apple.
• Warren Lipschitz (Principal)
  • Firm: McKool Smith PC
  • Experience Note: Part of the McKool Smith trial team that secured an $85 million patent damages verdict for WiLAN against Apple.
• Christopher P. McNett (Associate)
  • Firm: McKool Smith PC
  • Experience Note: Member of the McKool Smith trial team involved in the $85 million patent damages retrial for WiLAN against Apple.
• Allison H. Goddard
  • Firm: Patterson Law Group
  • Experience Note: Represented WiLAN in the case leading to the $85 million damages verdict against Apple.
• Sam Baxter
  • Firm: McKool Smith
  • Experience Note: Argued for Wi-LAN in a separate patent infringement trial against Apple involving other patents, where Wi-LAN sought $248 million.
• Scott Cole
  • Firm: McKool Smith PC
  • Experience Note: Represented WiLAN in the case leading to the $85 million damages verdict against Apple.
• Brett E. Cooper
  • Firm: McKool Smith PC
  • Experience Note: Represented WiLAN in the case leading to the $85 million damages verdict against Apple.
• Ashley N. Moore
  • Firm: McKool Smith PC
  • Experience Note: Represented WiLAN in the case leading to the $85 million damages verdict against Apple.
• Jonathan Yim
  • Firm: McKool Smith PC
  • Experience Note: Represented WiLAN in the case leading to the $85 million damages verdict against Apple.
• Seth Hasenour
  • Firm: McKool Smith PC
  • Experience Note: Represented WiLAN in the case leading to the $85 million damages verdict against Apple.
• Drew Hollander
  • Firm: McKool Smith PC
  • Experience Note: Represented WiLAN in the case leading to the $85 million damages verdict against Apple.

Initial Filing Counsel (Southern District of Florida):

When the case was originally filed in the Southern District of Florida, the complaint lists "Procopio, Cory, Hargreaves & Savitch LLP" as attorneys for Wi-LAN USA, Inc. and Wi-LAN, Inc. While specific attorney names from that firm are not immediately available in the initial filing excerpt, this firm served as counsel at the initial stages in Florida.

The case was initially filed in the Southern District of Florida (1:12-cv-24318) and later transferred to the Southern District of California, becoming case number 3:13-cv-00798.

Based on available information for the Southern District of California case (3:13-cv-00798), the following attorneys and firms have represented Apple Inc.:

Counsel for Defendant Apple Inc.:

• Lauren A. Degnan

  • Role: Principal/Lead Counsel
  • Firm: Fish & Richardson P.C., Washington, D.C.
  • Experience: Ms. Degnan is a seasoned trial and appellate lawyer who handles high-stakes intellectual property disputes, particularly known for her strategic focus in multi-jurisdictional cases and effective legal writing. She has an extensive background in patent infringement cases, including those before U.S. district courts, the U.S. International Trade Commission (ITC), and the Patent Trial and Appeal Board (PTAB), with over 25 arguments before the Federal Circuit. Fish & Richardson is a global patent, intellectual property, and commercial litigation law firm, consistently ranked as a top firm for patent litigation, and frequently represents Fortune 100 companies in high-stakes patent cases.

• Richard E. Parke

  • Role: Counsel (likely local or of counsel, given his primary base in NY)
  • Firm: Kenealy Vaidya LLP (formerly Wissing Miller LLP), New York, NY.
  • Experience: Mr. Parke is an experienced intellectual property litigator and counselor with a practice encompassing complex intellectual property cases, including patent and trademark matters across various industries like telecommunications, medical devices, and pharmaceuticals. He has experience in all aspects of intellectual property litigation, from pre-trial investigation through appeal. He has been recognized as a New York Super Lawyer for Intellectual Property Litigation.

• Erica W. Anderson

  • Role: Counsel (specific role not detailed, but likely part of the defense team)
  • Firm: Potentially associated with Dowd Bennett LLP or Law Offices of Erika E. Anderson (based on search results, but direct link to Apple representation in this specific case is not explicitly stated in firm profiles).
  • Experience: While "Erica W. Anderson" and "Erika E. Anderson" appear in search results with backgrounds in litigation and intellectual property, the specific firm and role for Apple in this case is less clear than for Degnan and Parke. One Erica Anderson has experience in civil litigation and appeals, and has served as lead and co-counsel in trials. Another Erica Anderson is a recognized expert in clinical psychology. Without more specific docket information, it is difficult to definitively confirm her exact role and firm in this Apple case.

• P.J. Cherian

  • Role: Counsel (specific role not detailed)
  • Firm: Cherian Harkins Dunham LLP (formerly Cherian LLP), with offices in Washington, D.C., Dallas, TX, and Berkeley, CA.
  • Experience: Cherian Harkins Dunham LLP is an IP litigation firm with experience in patent, IP, and commercial litigation, including complex patent infringement lawsuits and post-grant proceedings before the PTAB. The firm and its attorneys have been recognized by leading IP directories.

• Michael J. Maloof

  • Role: Counsel (specific role not detailed)
  • Firm: While Michael J. Maloof is a name that appears in patent litigation, the search results do not directly link him to representing Apple in this specific case (3:13-cv-00798).

• Robert P. Andris

  • Role: Counsel (specific role not detailed)
  • Firm: The search results did not provide clear information linking Robert P. Andris to representing Apple in this specific case (3:13-cv-00798).

It is important to note that without direct access to the full, unsealed docket for 3:13-cv-00798, the precise roles and appearance dates for all counsel cannot be definitively confirmed. However, Lauren A. Degnan and Richard E. Parke appear to be prominent defense counsel.