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Apple Inc. continues to sit at the forefront of global innovation, but even the most sophisticated technology companies are not immune to complex legal challenges. In recent weeks, Apple has faced two significant intellectual property (IP) setbacks, one in the United States and one in the United Kingdom, each with far-reaching implications for companies navigating patent litigation, standards licensing, and global IP enforcement.

This blog examines two recent decisions that have put Apple’s IP practices under scrutiny: one involving the use of Applicant Admitted Prior Art (AAPA) in a U.S. case before the Federal Circuit, and another concerning royalty obligations for standard-essential patents (SEPs) in the UK.

Federal Circuit Reverses PTAB Decision: AAPA Misapplied
In April 2025, the U.S. Court of Appeals for the Federal Circuit overturned a favorable ruling for Apple by the Patent Trial and Appeal Board (PTAB). The case centered on Apple’s challenge to a patent using a combination of a printed publication and Applicant Admitted Prior Art (AAPA), statements made in the challenged patent’s own specification acknowledging the existence of certain prior art.

The PTAB had sided with Apple, holding that the combination was valid grounds to invalidate the claims. However, the Federal Circuit disagreed, clarifying that AAPA alone does not constitute “prior art consisting of patents or printed publications” as required under the America Invents Act (AIA) for inter partes review (IPR) proceedings. The court ruled that while AAPA may inform a skilled artisan’s understanding, it cannot be the primary basis for an obviousness challenge.

Implications:

Limits of IPR Strategy: Companies seeking to invalidate patents at the PTAB must ensure their arguments rely primarily on statutory prior art. Internal admissions, even when found in the patent under review, are not enough.
Importance of Procedural Precision: This case reinforces how procedural interpretation can outweigh substantive arguments. Understanding statutory language is critical to litigation success.
Drafting Risk Awareness: While not directly at issue in this case, the broader takeaway for patent applicants is to be cautious when characterizing prior art in their applications, as such language can be used in litigation, though with limits.
Increased Scrutiny of PTAB Practices: The ruling may prompt changes in how PTAB applies AAPA going forward, potentially raising the bar for IPR petitioners more broadly.

UK Court of Appeal Orders Apple to Pay $502 Million in FRAND Dispute
Just days later, Apple received another legal setback, this time from the UK Court of Appeal. On May 1, 2025, the court affirmed a judgment requiring Apple to pay $502 million to Optis Cellular Technology LLC for a global license to its 4G standard-essential patents. The case, which began when Optis sued Apple in 2019, centered on the appropriate amount Apple must pay under fair, reasonable, and non-discriminatory (FRAND) licensing obligations, which are required under global standards-setting agreements.

The decision dramatically increased the damages from the UK High Court’s 2023 estimate of just over $56 million which was made by the judge at the High Court of England and Wales without reliance on experts from either company. The UK Court of Appeals found that a lump-sum license more accurately reflected the global nature of Apple’s 4G usage and the market value of Optis’s portfolio when awarding $502 million based on a $0.15 per unit royalty. Apple had previously indicated that it would not accept a license on terms set by the UK court and may appeal this decision.

Implications for large IP holders and the broader IP landscape:

FRAND Licensing as a Global Risk: The case signals a shift in how courts outside the U.S. are willing to impose significant global licensing terms, even where the jurisdictional scope is limited.
Litigation Forum Strategy: SEP holders may increasingly look to the UK and other jurisdictions as favorable venues for global FRAND determinations.
Financial Exposure in SEP Disputes: The magnitude of the damages awarded suggests that SEP enforcement remains a serious financial risk for tech companies, especially those reliant on standard essential patents.

Strategic Takeaways for Technology Companies
Taken together, these rulings offer several lessons for companies navigating the increasingly complex world of IP litigation:

Global IP Planning is Essential: Legal decisions in one country can have global implications. Multinationals must anticipate and coordinate litigation strategies across multiple jurisdictions.
Proactive Legal Audits: Regular reviews of patent drafting practices and litigation exposure are crucial. Ensuring that internal admissions in patents does not open doors for unintended invalidity risks is now more important than ever.
Valuation and Licensing Readiness: As courts impose large-scale licensing obligations, companies must be prepared to defend or justify the value of their own and others’ patent portfolios, especially under FRAND regimes.

Conclusion
Apple’s recent legal setbacks illustrate the challenges even the most sophisticated companies face in managing global intellectual property. The Federal Circuit’s reversal and the UK’s expanded damages ruling in the Optis case serve as timely reminders that patent strategy must be tightly integrated with legal, technical, and business planning.

For consulting firms advising clients on IP strategy and valuation, these cases reinforce the value of forward-looking risk assessments, cross-border legal coordination, and ongoing patent portfolio management. As courts refine the rules around prior art and FRAND licensing, staying ahead of evolving jurisprudence will be key to maintaining competitive advantage and avoiding costly surprises.

The Supreme Court issued its decision on Helsinn Healthcare S. A. v. Teva Pharmaceuticals USA, Inc. on January 22, 2019, upholding and applying the pre-AIA on-sale precedent to post-AIA matters. This holding establishes that a sale or offer to sell, including secret sales and sales that do not publicly disclose the details of the invention, can qualify as prior art and invalidate a patent under the AIA.

The issue before the Supreme Court was whether the provisions in the Leahy-Smith America Invents Act (“AIA”) that bar a company from receiving a patent on an invention that was in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention is triggered by a company that sells its invention to a third party under a contractual obligation to keep the invention confidential.

Helsinn Healthcare S. A. (“Helsinn”) created a treatment for chemotherapy-induced nausea and vomiting using the chemical palonestron which is called Aloxi. Helsinn acquired the right to develop this product in 1998 and announced that it was initiating Phase III clinical trials in 2000 and was seeking partners to market the product. Helsinn entered into two agreements with MGI Pharma, Inc. (“MGI”) which included a license agreement granting MGI the right to distribute, promote, market and sell the product in the US in exchange for upfront payments and future royalties. Helsinn and MGI also entered into a supply and purchase agreement under which MGI agreed to purchase exclusively from Helsinn any palonosetron product approved by the FDA. Both agreements required MGI to keep confidential any proprietary information received under the agreement. Helsinn and MGI announced the agreement in a joint press release in 2001.

On January 30, 2003, Helsinn filed a provisional patent application covering the palonosetron product and subsequently filed four more patent applications over the next ten years claiming priority to this provisional application. The final application was filed in May 2013 and by virtue of its effective date, the patent that was granted (‘219 patent) from this application is governed by the AIA.

In 2011, Teva Pharmaceutical Industries (“Teva”) sought approval from the FDA to market a generic version of Helsinn’s palonestron product and was subsequently sued by Helsinn for infringing its patents, including the ‘219 patent. In response, Teva asserted that the ‘219 patent was invalid because it was on sale more than one year before Helsinn filed its provisional patent application in 2003.

The District Court determined that the on-sale provision did not apply under the AIA unless the sale or offer in question made the claimed invention available to the public. Based on this interpretation, the District Court decided that that on-sale provision was not applicable because Helsinn and MGI did not disclose the dosing information in their public statement and such information is claimed by the patents relevant in this case. Without disclosure of the dose, the District Court held that the invention was not publicly disclosed and thus not on sale.

The Federal Court reversed, concluding that the public disclosure of the sale is sufficient to trigger the on-sale bar, even if the public disclosure does not include the details of the invention. Therefore, because Helsinn and MGI publicly disclosed the sale, the Federal Court held that the on-sale bar applied.

The Supreme Court granted certiorari to determine whether, under the AIA, an inventor’s sale of an invention to a third party who is obligated to keep the invention confidential qualified as prior art for purposes of determining the patentability of the invention. It held that such a sale can qualify as prior art.

In making its decision, the Supreme Court noted that Congress imposed several conditions on the exclusive rights provided through the issuance of patents and one such condition is the on-sale bar. This condition reflects Congress’ reluctance to allow an inventor to remove existing knowledge from public use through the issuance of a patent on that knowledge. The Court explained how every patent statute since 1836 included an on-sale bar, including the statute in force prior to the implementation of the AIA. The AIA retained the on-sale bar and added a broad catchall phrase, “or otherwise available to the public,” and the Court looked to decide whether this addition altered the meaning of the on-sale bar.

The Court noted that while it had never addressed the exact question presented in this case, earlier decisions suggest that the definition of a sale or offer of sale does not require that each detail of the invention subject to the sale or offer of sale be available to the public. For example, the Court in 1998 held that an invention is on sale when it is the subject of a commercial offer for sale and is ready for patenting (Pfaff v. Wells Electronics, Inc., 525 U. S. 55, 67 (1998)). Past precedent focused on whether the invention had been sold, not on the level of detail publicly disclosed whether that detail related to the invention or the sale itself. The Court believed that there was sufficient pre-AIA precedent on the meaning of “on sale” to enable the Court to make the presumption that Congress adopted this meaning in the AIA since it reenacted the same language in the AIA.

The Supreme Court held that Congress did not alter the meaning of “on sale” when it enacted the AIA and thus, an inventor’s sale of an invention to a third part who is obligated to keep the invention confidential can qualify as prior art. While this decision only extends pre-AIA precedent to post-AIA matters, it is an important decision for emerging companies to comprehend. Many companies that we work with at Foresight seek to secure partnership with established companies during their pre-launch strategic planning and leverage these partnerships to show investors traction or product market fit before launching their products or services. While these activities provide objective metrics that can be relied upon by the company to make strategic business decisions and by the investor to de-risk their investment, such activities can have profound impacts on the company’s ability to secure patent protection for their innovation and must be done in combination with an established intellectual property strategy to ensure that such activities are done in a manner that does not trigger the outcome seen in the Helsinn decision.

Foresight Valuation Group

Tag: AIA

Double Trouble – Apple’s Recent Legal Setbacks Highlight Key Lessons in Global IP Strategy

Helsinn v. Teva Decision: Secret Sales Qualify as Prior Art under the AIA