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.
§
§
§
§
§
§
§
§
§
§
§
§
§
§
CASE NO. 2:19-CV-00066-JRG
MEMORANDUM OPINION AND ORDER
Before the Court are two motions: (a) the Motion for Summary Judgment of Invalidity (the
“Apple Motion”) (Dkt. No. 774) filed by Defendant Apple Inc. (“Apple”); and (b) the Motion for
Summary Judgment that the ’332 Patent Is Not Invalid (the “Optis Motion”) filed by Plaintiffs
Optis Wireless Technology, LLC, Optis Cellular Technology, LLC, and PanOptis Patent
Management, LLC, Unwired Planet, LLC, and Unwired Planet International Limited (collectively,
“Optis”). In the Apple Motion, Apple moves for summary judgment that claims 6 and 7 of U.S.
Patent No. 8,019,332 (the “’332 Patent”) are directed to patent ineligible subject matter under 35
U.S.C. § 101. (Dkt. No. 774 at 1). Similarly, in the Optis Motion, Optis moves for summary
judgment that those same claims are directed to patent eligible subject matter. (Dkt. No. 777 at 1).
Having considered the Apple and Optis Motions, and their related briefing, the Court finds that
both should be DENIED.
Case 2:19-cv-00066-JRG Document 802 Filed 01/27/26 Page 1 of 8 PageID #:
<pageID>

2
I. BACKGROUND
The ’332 Patent is directed to “efficiently transmitting and receiving control information
through a” Physical Downlink Control Channel (“PDCCH”). Optis Cellular Technology, LLC v.
Apple Inc., 139 F.4th 1363, 1369 (Fed. Cir. 2025). The patent describes “an approach to limiting
the Control Channel Elements (“CCEs”) available to User Equipment (“UE”) for the PDDCH to
reduce search processing by the UE.” Id. Claim 6 and 7 of the ’332 Patent recite, respectively:
6. A user equipment (UE) for decoding control information, the UE
comprising:
a receiver for receiving a Physical Downlink Control Channel
(PDCCH) from a base
station at subframe k; and
a decoder for decoding a set of PDCCH candidates within a search
space of the
PDCCH at the subframe k, wherein each of the set of PDCCH
candidates comprises
‘L’ control channel elements (CCEs),
wherein the ‘L’ CCEs corresponding to a specific PDCCH candidate
among the set
of PDCCH candidates of the search space at the subframe k are
contiguously located
from a position given by using a variable of 𝑌𝑘 for the subframe k
and a modulo ‘C’
operation, wherein ‘C’ is determined as ‘floor(N/L)’, wherein ‘N’
represents a total number of CCEs in the subframe k, and wherein
𝑌𝑘 is defined by:
𝑌𝑘 = (𝐴 ∗ 𝑌𝑘−1)𝑚𝑜𝑑 𝐷,
wherein A, and D are predetermined constant values.
7. The UE of claim 6, wherein A and D are 39827 and 65537, respectively.
Case 2:19-cv-00066-JRG Document 802 Filed 01/27/26 Page 2 of 8 PageID #:
<pageID>

3
(Dkt. No. 777 at 1). On appeal from a previous verdict in this case, the U.S. Court of
Appeals for the Federal Circuit (the “Federal Circuit”) evaluated both claims under the first
of the two-step process established by the Court in Alice Corp. Pty. Ltd. v. CLS Bank Int’l,
573 U.S. 208 (2014). Optis, 139 F.4th at 1378. The Federal Circuit concluded that the
claims are directed to the ineligible mathematical formula: “𝑌𝑘 = (𝐴 ∗ 𝑌𝑘−1)𝑚𝑜𝑑 𝐷,
wherein A, and D are predetermined constant values,” and a “modulo ‘C’ operation,
wherein C is determined as ‘floor(N/L).’” Id. at 1379–80. The Federal Circuit further
instructed this Court on remand to evaluate the claims under Alice step two to determine
whether they are patent ineligible. Id.
II. LEGAL STANDARD
(a) Summary judgment
Summary judgment should be granted “if the movant shows that there is no genuine dispute
as to any material fact and the movant is entitled to judgment as a matter of law.” FED. R. CIV. P.
56(a). Any evidence must be viewed in the light most favorable to the nonmovant. See Anderson
v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986) (citing Adickes v. S.H. Kress & Co., 398 U.S. 144,
158–59 (1970)). Summary judgment is proper when there is no genuine dispute of material fact.
Celotex v. Catrett, 477 U.S. 317, 322 (1986). “By its very terms, this standard provides that the
mere existence of some alleged factual dispute between the parties will not defeat an otherwise
properly supported motion for summary judgment; the requirement is that there be no genuine
[dispute] of material fact.” Anderson, 477 U.S. at 247–48 (emphasis added). The substantive law
identifies the material facts, and disputes over facts that are irrelevant or unnecessary will not
defeat a motion for summary judgment. Id. at 248. A dispute is “genuine” when the evidence is
“such that a reasonable jury could return a verdict for the nonmoving party.” Id. The moving
Case 2:19-cv-00066-JRG Document 802 Filed 01/27/26 Page 3 of 8 PageID #:
<pageID>

4
party must identify the basis for granting summary judgment and evidence demonstrating the
absence of a genuine dispute of material fact. Celotex, 477 U.S. at 323.
(b) Patent Eligibility
At Alice step two, if the claims are directed to ineligible subject matter, the Court then
determines whether the claims contain an “inventive concept—i.e., an element or combination of
elements that is sufficient to ensure that the patent in practice amounts to significantly more than
a patent upon the [abstract idea] itself.” Alice, 573 U.S. at 217–18 (internal citations and quotes
omitted). This step is satisfied when the claim limitations “involve more than performance of
‘well-understood, routine, [and] conventional activities previously known to the industry.’”
Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347–
48 (Fed. Cir. 2014) (quoting Alice, 134 S. Ct. at 2359). “[A]n inventive concept can be found in
the non-conventional and non-generic arrangement of known, conventional pieces,” BASCOM
Glob. Internet Svcs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349–50 (Fed. Cir. 2016), but
such arrangement must also amount to more than mere “‘well-understood, routine, conventional
activit[ies].’” Alice, 573 U.S. at 225 (quoting Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 71 (2012)). “The question of whether a claim element or combination of
elements is well-understood, routine and conventional to a skilled artisan in the relevant field is a
question of fact.” Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
With these guiding principles in mind, the Court turns to the substance of the patent
eligibility inquiry at hand.
III. ANALYSIS
The Court addresses the Apple and Optis Motions in turn below.
Case 2:19-cv-00066-JRG Document 802 Filed 01/27/26 Page 4 of 8 PageID #:
<pageID>

5
(a) Apple’s Motion
Apple moves for summary judgment that claims 6 and 7 of the ’332 Patent are directed to
patent ineligible subject matter. (Dkt. No. 774). Apple advances three sources of evidence in
support of the Apple Motion. However, none of these sources demonstrate the absence of a
genuine dispute of material fact.
First, Apple cites to the Reasons for Allowance issued by the U.S. Patent & Trademark
Office, asserting that the Office found that two prior art references disclosed certain claim
elements. (Dkt. No. 774 at 4–5, 9). This is insufficient. Indeed, it is well-settled that whether a
claim element is known is a distinct question from whether that element is well-understood,
routine, and conventional. Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (“Whether a particular
technology is well-understood, routine, and conventional goes beyond what was simply known in
the prior art. The mere fact that something is disclosed in a piece of prior art, for example, does
not mean it was well-understood, routine, and conventional”); see also Exergen Corporation v.
Kaz USA, Inc., 725 Fed. App’x 959, 966 (Fed. Cir. 2018).
Second, Apple points to the ’332 Patent itself. (Dkt. No. 774 at 8). According to Apple,
the patent concedes that each element of the claims was well-understood, routine, and conventional
by discussing those elements in its background section. (Id.). That concession is incomplete.
Indeed, the ’332 Patent has not provided that the “ordered combination of elements” recited by
claims 6 and 7 were well-understood, routine, or conventional. Bascom Global Internet Services,
Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016).
Finally, Apple contends that Mr. Mark Lanning (Apple’s technical expert) has
undisputedly shown that the “remaining elements of claims 6 and 7 . . . were well-understood and
conventional in the mobile communications community prior to the ’332 [P]atent.” (Dkt. No. 774
Case 2:19-cv-00066-JRG Document 802 Filed 01/27/26 Page 5 of 8 PageID #:
<pageID>

6
at 3–4 (citations omitted)). Viewing the evidence in a light most favorable to Optis, the Lanning
report evidences that only individual elements, such as an LCG equation and PDCCH processing
architecture, were known prior to the patent. (See Dkt. No. 243-6 ¶ 483). This does not alter the
reality that a material fact question still remains as to whether the ordered combination of elements
was routine, conventional, and well-understood. See Bascom, 827 F.3d at 1349.
Accordingly, nothing advanced by Apple demonstrates the absence of a genuine dispute as
to the patent ineligibility of claims 6 and 7 of the ’332 Patent. To the contrary, the ’332 Patent
discloses that its ordered combination of elements departs from and improves upon conventional
UE systems, which would “decode all PDCCH regions,” resulting in “[e]xcessive UE processing
performance.” (Dkt. No. 777-2 at 2:5–7; see also United Services Automobile Assoc. v. Wells
Fargo Bank, N.A., 414 F.Supp.3d 947, 957 (E.D. Tex. 2019)). Specifically, the ’332 Patent
purports to provide UE systems that “limit the number of times the UE has to decode in order to
receive a PDCCH.” (Dkt. No. 77-2 at 5:30–34). Further, the claimed inventions’ purported
benefits over conventional systems bolster this conclusion. See Bascom Global Internet Services,
Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016) (citing Research Corp. Techs.
V. Microsoft Corp., 627 F.3d 859, 869 (Fed. Cir. 2010)); Amdocs (Israel) Limited v. Openet
Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016). For example, Dr. Vijay Madisetti (Optis’ technical
expert) opines that the claimed invention has increased download speeds (~4.6–8%) as compared
to non-infringing alternatives. (Dkt. No. 777-6 ¶¶ 573–574). In another example, the ’332 Patent
provides that “reduc[ing] the number of times the UE performs decoding . . . reduce[s] power
consumption of the UE.” (Dkt. No. 777-2 at 2:4–10). These confirm the existence of a genuine
and material fact dispute as to the patent ineligibility of claims 6 and 7 of the ’332 Patent.
Accordingly, the Court finds that the Apple Motion should be DENIED.
Case 2:19-cv-00066-JRG Document 802 Filed 01/27/26 Page 6 of 8 PageID #:
<pageID>

7
(b) Optis’ Motion
Optis argues that summary judgment is proper for three (3) reasons. First, Optis contends
that the claimed decoder and a PDCCH combination provide an inventive concept beyond the
abstract math formula. (Dkt. No. 777 at 4). Optis asserts that the combination solves the
problem of UE decoders inefficiently “decoding across all PDCCH candidates” by assigning
decoders to their “own space within the PDCCH to search.” (Id.). Second, Optis argues that the
technical benefits of the claimed inventions—efficiency and power savings advantages—further
evidence the presence of an inventive concept. (Id. at 9–10 (citing BASCOM Global Internet
Servs. V. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016)). Third, Optis insists that
Apple has not met its burden of showing that claims 6 and 7 are patent ineligible. (Id. at 7).
According to Optis, the “only evidence of any knowledge within the prior art . . . of the non-
equation claim elements as an ordered combination is the 3GPP technical proposal R1-081101,”
but that proposal “cannot be used as evidence” for patent ineligibility. (Id.). Specifically, Optis
maintains that the proposal was not publicly available by the ’332 Patent’s priority date and,
even if it were, it is undisputed that it was written by “people of extra ordinary skill in the art.”
(Id. at 7–8).
In response, Apple argues that summary judgment in favor of Optis is improper because
Optis has not identified an inventive concept in claims 6 and 7. (Id. at 2). While Apple recognizes
that Optis points to “limit[ing] the decoder to searching only a portion of the PDCCH domain” as
an inventive concept, Apple asserts that the claims do not feature such a limitation and such a
function is itself an abstract idea. (Id.). Apple also insists that Optis has not identified anything
to suggest that searching only a portion of the PDCCH domain “is novel.” (Id. at 3). Additionally,
Apple argues that the R1-081101 proposal informs the skilled artisan’s knowledge regarding what
Case 2:19-cv-00066-JRG Document 802 Filed 01/27/26 Page 7 of 8 PageID #:
<pageID>

8
was well-understood, routine, and conventional, creating, at minimum, a material fact dispute that
precludes summary judgment. (Id. at 4).
The Court finds that summary judgment in favor of Optis is improper. Viewing the
evidence in a light most favorable to Apple, the R1-081101 proposal raises a genuine and material
fact dispute as to whether the proposed decoder and PDCCH combination is routine, conventional,
and well-understood. Optis has not shown otherwise. For example, Optis insists that the proposal
is not prior art and has not disclosed the ordered combination of elements, but “‘the scope and
content of the prior art’ is a factual question, the factual dispute as to whether the limitations in
such an ordered combination were disclosed in the prior art is not amenable to resolution on
summary judgment.” United Services, 414 F.Supp.3d at 960 (citing Neptune Generics, LLC v. Eli
Lilly & Co., 921 F.3d 1372, 1377 (Fed. Cir. 2019)). Optis has not resolved the question of whether
a UE decoder that only searches portions of PDCCHs was routine, conventional, and well
understood to the skilled artisan. This is a fact question reserved for the jury. Berkheimer, 881
F.3d at 1368 (Fed. Cir. 2018).
Accordingly, the Court finds that the Optis Motion should be DENIED.
IV. CONCLUSION
For the foregoing reasons, the Court finds that the Apple Motion (Dkt. No. 774) and the
Optis Motion (Dkt. No. 777) should be and are both hereby DENIED.
.
____________________________________
RODNEY GILSTRAP
UNITED STATES DISTRICT JUDGE
So ORDERED and SIGNED this 27th day of January, 2026.
Case 2:19-cv-00066-JRG Document 802 Filed 01/27/26 Page 8 of 8 PageID #:
<pageID>