The Federal Circuit reversed a decision from the District Court for the Southern District of California that awarded Wi-LAN $85.23 million in damages against Apple for infringement of two Wi-LAN patents directed to VoLTE (Voice over LTE) technology. But, in so doing, the Federal Circuit rejected Apple’s claims that its iPhones do not infringe the patents and reversed the district court's decision that certain iPhones with Intel chipsets were licensed. Thus, all that remains of the case is a determination of how much Apple owes and how much the Intel-based phones will add to that award.

This case has been going on since 2014. In a first trial, a jury awarded Wi-LAN damages in the amount of $145.1 million. The judge, however, found fault in testimony that conflated the value of the patented improvement to VoLTE to the value of VoLTE generally and gave Wi-LAN the choice to accept a $10 million award or have a new trial on damages. Wi-LAN elected to have a new trial. The Federal Circuit upheld the district court’s decision to order a new trial.

During the new trial, a jury awarded Wi-LAN damages in the amount of $85.23 million based on Wi-LAN’s reliance on three prior licenses to the patents to set a royalty rate of $0.45 per phone. But the Federal Circuit found Wi-LAN failed to properly apportion the comparable licenses to reflect the value of the asserted patents. In particular, the licenses also covered many other patents than the ones Apple infringed, and the expert’s testimony as to why he disregarded those other patents was lacking or contradicted. Accordingly, the Federal Circuit remanded the case to the district court for a new trial on damages.

That new trial on damages will also include iPhones containing Intel chipsets. Apple successfully convinced the district court that Wi-LAN had granted Intel a license to its patents in perpetuity rather than for a set term. Thus, the Intel-based iPhones were excluded from the original damages awards. The Federal Circuit found that the Intel-Wi-LAN license was only for a fixed term, and that the sales of Intel chipsets after the term of that license were unlicensed. In the second new trial on damages, the Intel-based iPhones will be included in the damages base, should Wi-LAN show Intel chipsets infringe in a similar manner as the iPhones with non-Intel chipsets.