IPR Archives - Foresight Valuation Group

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.

World IP Day 2018 coincides with a highly anticipated, landmark decision by the US Supreme Court in the case of OIL STATES ENERGY SERVICES, LLC v. GREENE’S ENERGY GROUP, LLC, ET AL. which relates to the process known as inter partes review (IPR).

Inter Partes Review Process

The IPR process, as introduced by the America Invents Act of 2011, allows any person (other than the patent owner) to file a petition with the USPTO with request for cancellation of one or more claims of a previously issued patent on the grounds that the claim fails the novelty or non-obviousness standards for patentability. Before the USPTO Director can institute an IPR, the Director must determine that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged. Once instituted, the PTAB examines the patent’s validity. The petitioner has the burden of proving unpatentability by a preponderance of the evidence. If there is no agreement between the patent owner and the petitioner to settle the case, the PTAB must issue a written final decision no later than a year after it notices the institution of inter partes review. If the Board’s decision becomes final, the Director must issue and publish a certificate. The certificate cancels patent claims finally determined to be unpatentable, confirms patent claims determined to be patentable, and incorporates into the patent any new or amended claim determined to be patentable. If a party is dissatisfied with the Board’s decision, they can seek judicial review in the Court of Appeals for the Federal Circuit. When reviewing the Board’s decision, the Federal Circuit assess the Board’s compliance with governing legal standards de novo (i.e., without reference to any legal conclusions made by the PTAB) and its underlying factual determinations for substantial evidence.

Oil States Case Overview

Oil States Energy Services and Greene’s Energy Group are both oilfield services companies. Oil States obtained a patent in 2001 relating to an apparatus and method for protecting wellhead equipment used in hydraulic fracturing and in 2012 sued Greene’s Energy for infringing the patent. Greene responded by challenging the patent’s validity and also petitioned the USPTO to institute inter partes review. The USPTO found that Greene had established a reasonable likelihood that the two challenged claims were unpatentable and, thus, instituted inter partes review. Both proceedings progressed in parallel with the District Court ruling in favor of Oil States and then the USPTO issuing a final written decision concluding that the claims were unpatentable. Oil States sought review in the Federal Circuit challenging the Board’s decision as well as challenging the constitutionality of inter partes review. The Federal Court affirmed the Board’s decision in favor of Greene that the claims were unpatentable. Oil States, in challenging the constitutionality of inter partes review, argued before the Supreme Court that actions to revoke a patent must be tried in an Article III court before a jury. Oil States wanted the Court to recognize patent rights as the private property of the patentee which would bring it into the domain of Article III Courts. Article III vests the judicial power of the United States in one Supreme Court, and in such inferior Courts as the Congress may from time to time ordain and establish. Consequently, Congress cannot confer the Government’s judicial power on entities outside Article III. When determining whether a proceeding involves an exercise of Article III judicial power, the Court’s precedents have distinguished between public rights and private rights. Those precedents have given Congress significant latitude to assign adjudication of public rights to entities other than Article III Courts.

Supreme Court Oil States’ Decision

The Supreme Court held that the determination to grant a patent is a matter involving public rights and need not be adjudicated in Article III court. By issuing patents, the USPTO takes from the public rights of immense value, and bestows them upon the patentee. Specifically, patents are public franchises that the government grants to the inventors of new and useful improvements. The franchise gives the patent owner the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States. Additionally, granting patents is one of the constitutional functions that can be carried out by the executive or legislative departments without judicial determination. When the USPTO adjudicates the patentability of inventions, it is exercising the executive power. Inter partes review involves the same basic matter as the grant of a patent, and it therefore falls on the public rights side of the line. Like the initial review, the Board’s inter partes review protects the public’s paramount interest in seeing that patent monopolies are kept within their legitimate scope.

Foresight’s Commentary on the Oil States decision

The Oil States makes clear the power of Congress to provide the USPTO with broad post-issuance authority. In other words, the status quo remains in the US patent market. From a patent valuation perspective, IPRs have already negatively impacted the value of patents due the uncertainty coupled to these proceedings. The Oil States decision reinforces the constitutionality of IPR proceedings and may further complicate the processes by which patent owners monetize their assets and would add Oil States to the list of cases such as Alice and Mayo that reinforce the uncertainty in the market regarding the patentability of cutting edge inventions.

While the Supreme Court’s Oil States decision has been largely anticipated by the IP community, one should review it in conjunction with Andrei Iancu’s recent public statements, which might arguably be the more interesting development this week. Director Iancu’s statement that “human-made algorithms that are cooked up, invented as a result of human ingenuity are different from discoveries and mathematical representations of those discoveries” might signal an effort by the Director to push for changes in validity considerations that would include these algorithms that can be distinguished from mathematical representations of discoveries. This statement may signal the emergence of a market for patents claiming algorithms, a market that currently resides behind NDAs and trade secret protection.

** Foresight’s commentary to Oil States, along with the commentary of other industry leaders, was published by IPWatchdog.

Foresight Valuation Group

Tag: IPR

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

Oil States Energy v. Green’s Energy: Implications for the Patent Market