Optis Wireless Technology, LLC et al v. Apple Inc.

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
OPTIS WIRELESS TECHNOLOGY, LLC,
OPTIS CELLULAR TECHNOLOGY, LLC,
PANOPTIS PATENT MANAGEMENT,
LLC, UNWIRED PLANET, LLC, and
UNWIRED PLANET INTERNATIONAL
LIMITED,
Plaintiffs,
v.
APPLE INC.,
Defendant.
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CASE NO. 2:19-CV-00066-JRG
MEMORANDUM OPINION AND ORDER
The Court issues this Order sua sponte. For the reasons set forth below, the Court finds
that Plaintiffs Optis Wireless Technology, LLC, Optis Cellular Technology, LLC, PanOptis Patent
Management, LLC, Unwired Planet LLC, and Unwired Planet International Limited’s
(collectively, “Optis”) claims of patent infringement as to claims 1 and 5 of U.S. Patent No.
8,411,557 (the “’557 Patent”) should be either LIVE ISSUES before the Court or DISMISSED
WITH PREJUDICE.
I. BACKGROUND
On appeal, the U.S. Court of Appeals for the Federal Circuit (the “Federal Circuit”) found
that claim 1 and claim 5, by virtue of its dependency on claim 1, invoke 35 U.S.C. § 112 ¶ 6. Optis
Cellular Technology, LLC v. Apple Inc., 139 F.4th 1363, 1383 (Fed. Cir. 2025). Specifically, the
Federal Circuit found that the “selecting unit” recited by the claims is in means-plus-function
format. Id. The Federal Circuit then instructed this Court on remand to determine whether the
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’557 Patent discloses adequate corresponding structure for that term on remand. Id. A question
as to the validity of claims 1 and 5 of the ’557 Patent therefore remains before the Court.
On January 02, 2026, Optis filed the Notice of Claim Narrowing for Trial (the “Notice”).
(Dkt. No. 771). In the Notice, Optis notifies the Court that it “hereby withdraws claims 1 and 5”
of the ’557 Patent. (Id. at 1). Later that same day, Defendant Apple Inc. (“Apple”) filed the Motion
for Summary Judgment (the “Motion”), in which it moved for summary judgment that claims 1
and 5 are invalid as indefinite. (Dkt. No. 775).
Now, the parties dispute the effect of the Notice. Optis argues that its withdrawal of claims
1 and 5 of the ’557 Patent obviated as moot any need to determine whether the claims are invalid.
(Dkt. No. 789 at 1–2). As support, Optis cites Apple’s counterclaim, which provides that Apple
seeks “a judicial determination that the asserted claims of the ’557 Patent are invalid.” (Id. at 1
(citing Dkt. No. 110 ¶ 66) (emphasis added)). Optis reasons that, as claims 1 and 5 of the ’557
Patent are no longer “asserted claims,” there is no longer a continuing case or controversy as to
those claims. (Id.).
Apple takes the opposite position. Apple argues that that the Notice has not impacted the
pendency of Apple’s invalidity counterclaim as to the ’557 Patent. (Dkt. No. 775 at 1, n. 1; see
also Dkt. No. 800 at 5–6). Additionally, and during the Telephonic Status Conference held on
January 22, 2026, Apple represented that, if claims 1 and 5 of the ’557 Patent were dismissed with
prejudice, then it would not object to the withdrawal of those claims. (See Dkt. No. 800 at 5–6).
II. LEGAL STANDARD
The U.S. Court of Appeals for the Fifth Circuit (the “Fifth Circuit”) has consistently
confirmed that “‘a district court may dismiss a claim on its own motion as long as the procedure
employed is fair.’” Carver v. Atwood, 18 F.4th 494, 498 (5th Cir. 2021) (citing Davoodi v. Austin
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Indep. Sch. Dist., 755 F.3d 307, 310 (5th Cir. 2014) (quotation omitted); see also Lazano v. Ocwen
Federal Bank, FSB, 489 F.3d 636, 642 (5th Cir. 2007); Carroll v. Fort James Corp., 470 F.3d
1171, 1177 (5th Cir. 2006). “‘[F]airness in this context requires both notice of the court’s intention
and opportunity to respond.’” Carver, 18 F.4th at 498 (quotation omitted).
III. ANALYSIS
The Court agrees with Optis that the withdrawal of claims 1 and 5 of the ’557 Patent would
moot Apple’s Motion. However, such unilateral withdrawal would also cause material prejudice
to Apple. This case is on the eve of its third jury trial, and Apple has expended significant resources
in both this Court and the Federal Circuit defending itself from Optis’ claims, including by moving
for summary judgment that the claims are invalid. Cf. Hartford Acc. & Indem. Co. v. Costa Lines
Cargo Services, Inc., 903 F.2d 353, 360 (5th Cir. 1990). This unconditional withdrawal would
allow Optis to avoid Apple’s invalidity allegations and pursue a similar claim in a future action,
thereby wasting the significant resources already spent and depriving Apple of a final resolution
here. Under these facts, the Court finds that sua sponte dismissal of claims 1 and 5 of the ’557
Patent with prejudice may be warranted if Optis maintains its withdrawal to be without prejudice.
IV. CONCLUSION
Based on the foregoing reasons, and to afford fairness to the parties, the Court finds that
either Optis should withdraw its attempt to narrow the issues (by dropping claims 1 and 5 of the
’557 Patent) or, alternatively, its claims of patent infringement as to claims 1 and 5 of the ’557
Patent should be dismissed with prejudice. Accordingly, and to ensure procedural fairness, Optis
is ORDERED to file a notice with the Court within the next three (3) days from the date of this
Order indicating whether or not they choose to withdraw their earlier narrowing as to claims 1 and
5 of the ’557 Patent. If Optis elects not to withdraw their earlier narrowing (asserted to be without
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prejudice), then the Court will dismiss the same with prejudice for the reasons set forth above.
However, if Optis withdraws their earlier narrowing, then the Court will take up Apple’s Motion
and decide whether or not summary judgment that claims 1 and 5 of the ’557 Patent are invalid as
indefinite should be granted, as directed by the Federal Circuit.
.
____________________________________
RODNEY GILSTRAP
UNITED STATES DISTRICT JUDGE
So ORDERED and SIGNED this 29th day of January, 2026.
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