On January 29, 2020, Apple and Broadcom were ordered to pay US$1.1 billion in compensation to Caltech. This decision follows a complaint filed in 2016 by the Pasadena Institute of Technology (California) for patent infringement. Apple rejects this decision and has decided to appeal.
The verdict is in: Apple will have to pay $837 million to the California Institute of Technology for exploiting processes patented by the university. The case concerns 3 patents filed between 2006 and 2012, relating to data transmission via wifi.
The use of Caltech-patented processes
Apple’s devices are made up of electronic components supplied by Broadcom, notably for wifi data transmission. In 2016, the faculty decided to file a complaint against Apple and Broadcom, as these chips use technologies patented by the faculty. A total of 3 patents filed between 2006 and 2012 are involved in the case.
The chipmaker infringed these patents and supplied Apple, one of its main customers, with components for its devices. The chips in question are 802.11n and 801.11ac. TheVerge.com reports that the inventors did not even think their invention could be applied to wifi.
What next?
On January 29, 2020, the two multinationals were fined $1.1 billion. The compensation requested is equivalent to the sums that could have been paid for a license.
Apple and its supplier are determined not to stop there, and have already announced that they will challenge the judge’s decision. Apple maintains that it was unaware of the use of these patents in the manufacture of the chips. The case is not yet over, and will now go before the Court of Appeal.
Could this counterfeiting case have been avoided?
The fact that a technology is patented by a third party does not necessarily mean that you have no chance of benefiting from it.
If a particular technology, product or process is patented and of interest to you for your business development, you can try to negotiate a license for the patent.
The patent owner can allow third parties to exploit an innovation. Exclusively or not, for a certain period, a certain territory and for a certain sum. It’s all a matter of negotiating the license agreement!
Your CPI can help you to identify troublesome patents through a freedom-to-operate study, then negotiate the best licensing conditions with the patentee and finally draw up a patent licensing agreement, possibly with the help of a lawyer.
Benefit from the advice of an INPI-accredited patent attorney
Negotiate contracts, estimate the value of a patent, etc.
Is a license required to analyze a patent?
Researchers, be aware that if you wish to analyze a patented invention for research purposes only, you can do so under French law, even without a license!
Finally, after 20 years, or sooner if the patentee stops paying the annual fees, the patent falls into the public domain, and all descriptions of innovations are published for the benefit of the public.
Read more: How long does a patent last?
