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Conversant Wireless Licensing S.A.R.L. v. Apple, Inc.

United States District Court for the Northern District of California

May 10, 2019, Decided; May 10, 2019, Filed

Case No.15-cv-05008-NC

Opinion

Re: Dkt. No. 547.

ORDER GRANTING DEFENDANT'S MOTION FOR A FINDING OF UNENFORCEABILITY OF U.S. PATENT NO. 6,477,151

On remand from the Federal Circuit, defendant Apple, Inc. moves for a finding of unenforceability of U.S. Patent No. 6,477,151 ("'151 patent") held by plaintiff Conversant Wireless Licensing S.A.R.L. [*4]  See Dkt. No. 547. The Court must address a single, narrow issue: whether some inequitable consequence flowed from Nokia's failure to disclose its intellectual property rights before a standard setting organization. If so, the Court must apply the doctrine of implied waiver and find the '151 patent unenforceable. For the reasons stated below, the Court GRANTS Apple's motion.

I. Background

A. Procedural History

In December 2016, the Court held an eight-day jury trial. See Dkt. Nos. 406, 465. The jury returned a verdict for Conversant, finding that Apple infringed on both the '151 patent and the '536 patent. See Dkt. No. 466. The Court denied Apple's post-trial motions challenging the jury's verdict, its award of damages, and motion for unenforceability. See Dkt. No. 501.

Apple appealed. See Dkt. No. 506. On appeal, the Federal Circuit affirmed in part, reversed in part, and vacated in part. See Dkt. No. 528; see also Core Wireless Licensing S.A.R.L. v. Apple, Inc., 899 F.3d 1356 (Fed. Cir. 2018).1 Relevant here, the Federal Circuit affirmed the jury's verdict as to Apple's infringement of the '151 patent, but remanded to this Court on the single issue of "whether Nokia or [Conversant] inequitably benefited from Nokia's failure to disclose, or whether Nokia's conduct was sufficiently egregious to justify finding [*5]  implied waiver without regard to any benefit that Nokia or [Conversant] may have obtained as a result of that misconduct." Core Wireless, 899 F.3d at 1368-69.

B. Factual Background2

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2019 U.S. Dist. LEXIS 148297 *; 2019 WL 4038419

CONVERSANT WIRELESS LICENSING S.A.R.L.,, Plaintiff, v. APPLE, INC., Defendant.

Prior History: Core Wireless Licensing S.A.R.L. v. Apple Inc., 2016 U.S. Dist. LEXIS 44177 (N.D. Cal., Mar. 31, 2016)

CORE TERMS

patent, misconduct, egregious, licensing, unenforceability, invention, inequitable, infringed, equitable, configured, convincing, patentee