Context: The England & Wales Court of Appeal (EWCA) reversed the High Court of Justice for England & Wales (EWHC) in Optis v. Apple, the net effect being a royalty amount (including interest on past damages) on the order of $700 million (May 1, 2025 ip fray article). But there is also a U.S. part of the dispute. In that one, two damages trials had different outcomes ($300M in one case, slightly more than $500M in the other).
What’s new: Yesterday (June 16, 2025), the United States Court of Appeals for the Federal Circuit handed down its opinion on Apple’s appeal (and a much smaller cross-appeal by Optis) (PDF). A second merits trial and potentially third damages trial are needed in that case. One Optis patent could be invalidated for abstractness, but Apple’s appeal concerning the claim construction of another failed.
Direct impact: Patent damages awards in the nine or ten figures have a high rate of reversal (or at least adjustment) on appeal. Optis probably knew that wholesale affirmance was not the most likely outcome. But the recent EWCA decision makes a settlement a more logical next step than another jury trial.
Wider ramifications: The Federal Circuit sends a diplomatic messages to London that it is neither pleased nor impressed with the English courts’ aspirations to become the world’s exclusive FRAND forum. English judges should take note — and should realize that in the Optis v. Apple context they have embarrassed themselves as the Federal Circuit exposes that some judges in London didn’t even know what they were talking about: the outcome of the U.S. appeal is one that the EWCA simply failed to consider.
If Optis had fended off Apple’s appeal, it would have been an interesting question how to reconcile a $700M global royalty (including interest) determination in the UK with a $500M damages award in the parallel U.S. proceedings. That question could theoretically still come up, but not too soon. The U.S. litigation is going in circles:
On remand, the first thing the United States District Court for the Eastern District of Texas will have to address is whether one of Optis’s patents-in-suit is invalid on § 101 Alice grounds (abstract subject matter). The Federal Circuit considers the core of the relevant invention to be a mathematical formula, but that patent could still survive if Optis prevails at step 2 of the Alice analysis.
There will have to be a new infringement verdict (with potentially one patent less in play than last time, depending on whether Apple’s revived Alice defense finally succeeds), and the reason for that is perfectly logical: the way the verdict form was phrased, it is possible that all jurors agreed on some infringement but actually meant different patent claims. The unanimity requirement must, however, be applied correctly to the effect that an infringement verdict requires unanimity among the jurors with respect to the very same patent claim.
If there is another infringement finding, then there will be a new damages trial (the third one in that case, but Apple already experienced multiple damages trials per case in its epic dispute with Samsung that finally settled in 2018).
Only one part of Apple’s appeal failed: they wanted to get the district court’s claim construction (with respect to a different patent than the one under Alice pressure) overturned.
What the English courts have done with a view to that parallel U.S. litigation does not reflect favorably on them:
First, the EWHC enjoined Optis from further pursuing a U.S. litigation that was already at the appellate stage. This was so bad that even Lord Justice (LJ) Richard Arnold had comity concerns, which is the equivalent of hell freezing over.
Second, both LJ Colin Birss (per curiam) and LJ Arnold (concurrence), with both of whom a third judge agreed, based their speculation on possible implications of the U.S. case for their global FRAND determination on only three scenarios:
“Thus there are, broadly speaking, three possible [U.S.] outcomes: (i) Optis get[s] nothing; (ii) Optis get[s] $300 million for the past and future; and (iii) Optis get[s] $506.2 million for the past.”
That passage from the EWCA decision is also quoted by the Federal Circuit in footnote 9, and between the lines one can see that the U.S. judges are puzzled. The EWCA discussed three possible outcomes when there were countless possibilities and the actual outcome is one that the EWCA simply did not foresee. The Federal Circuit effectively exposes that the EWCA made assumptions about the U.S. case that have been proven wrong:
“Based on our conclusions here—that both the infringement and second damages judgments are vacated and the original verdict of $506,200,000 is not reinstated—we do not know how this opinion affects the English Court of Appeal’s decisions.”
Theoretically, the U.S. outcome could still be one of the three possibilities the EWCA contemplated. If the next jury finds no infringement, then Optis gets nothing, and that is one of the EWCA’s hypothetical scenarios. But the other scenarios are practically impossible now. If there is a new damages award, it can be any number, but it won’t realistically be one of the two numbers the EWCA mentioned.
It’s a relatively long footnote that quotes the EWCA (in fact, LJ Arnold’s concurrence) on comity:
[The EWCA decision of May 1, 2025] also stated that, “[f]or present purposes . . . [the English Court of Appeal is] assuming that it will be maintained by the [U.S. Court of Appeals for the Federal Circuit] to the extent that one of the two jury awards is upheld. Comity dictates that the English courts should not interfere with such a judgment save for compelling reasons, but there is no compelling reason in the circumstances of this case.”
That citation also looks like the Federal Circuit wants the EWCA to realize that there are judges in the U.S. (and obviously other jurisdictions, too) who are watching with concern the increasing jurisdictional imperialism of various UK judges in connection with standard-essential patent (SEP) cases.
At minimum, the footnote shows that the EWCA judges thought they knew what the possible results of the U.S. appeal could be. But they evidently did not. The best way to avoid this kind of embarrassment would be for them to stay in their lane. Patent enforcement outside the UK is none of their business, and if they don’t think so, they will at some point find out that other jurisdictions are not going to let parties capitalize on judicial imperalism by UK courts.