By Blake Brittain
(Reuters) – The U.S. Supreme Court on Tuesday asked for the Biden administration’s views on Apple Inc and Broadcom Inc’s bid to revive their challenges to patents owned by the California Institute of Technology, in a dispute in which Caltech previously won $1.1 billion in damages from the companies.
The justices asked for the U.S. solicitor general’s input on a lower court decision that prevented Apple and Broadcom from arguing the patents were invalid at trial.
Caltech had no comment on the Supreme Court’s order. Representatives Apple and Broadcom did not immediately respond to requests for comment.
Caltech, located in Pasadena, California, sued Cupertino-based Apple and San Jose-based Broadcom in 2016 in federal court in Los Angeles, alleging that millions of iPhones, iPads, Apple Watches and other devices with Broadcom Wi-Fi chips infringed its data-transmission patents.
A jury ruled for Caltech, ordering Apple to pay $837.8 million and Broadcom to pay $270.2 million. The U.S. Court of Appeals for the Federal Circuit took issue with the amount of the award and sent the case back for a new trial on damages, which is set to begin in June.
Apple and Broadcom also told the Federal Circuit that they should have been allowed to challenge the patents’ validity at trial. The patent-focused appeals court upheld the trial judge’s decision to block the companies from making the arguments because they could have raised them in their petitions for U.S. Patent and Trademark Office review of the patents.
The companies appealed that decision to the Supreme Court last September. They told the justices that the Federal Circuit misread the law, which they said only bars arguments that could have been raised during the review itself, not in the petition.
Caltech has also sued Microsoft Corp, Samsung Electronics Co, Dell Technologies Inc and HP Inc, accusing them of infringing the same patents in separate cases that are still pending.
Apple is a major purchaser of Broadcom chips, and in January 2020 reached a $15 billion supply agreement with the company. Apple reportedly plans to replace Broadcom’s chips with an in-house design in 2025.
Broadcom has estimated that 20% of its revenue comes from Apple.
The case is Apple Inc v. California Institute of Technology, U.S. Supreme Court, No. 22-203.
For Apple and Broadcom: Bill Lee of Wilmer Cutler Pickering Hale & Dorr
For Caltech: Kathleen Sullivan of Quinn Emanuel Urquhart & Sullivan
(NOTE: This story has been updated to reflect that Caltech had no comment on the order.)
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