Apple Inc. v. Qualcomm Incorporated
Docket No. 2020-1561, -1642 (IPR2018-01279, -01252) (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1561.OPINION.4-7-2021_1759839.pdf)
MOORE, REYNA, HUGHES
April 7, 2021
Brief Summary: Apple’s appeal of two IPR decisions dismissed for lack of standing in view of license agreement and speculative arguments related thereto.
Summary: Apple appealed IPR final written decisions (FWDs) holding Apple did show the challenged claims of US 7,844,037 and 8,683,362 obvious. The litigation related to these patents between Apple and Qualcomm was settled, including a license, but Apple nevertheless appealed the FWDs. Qualcomm argued waived standing to appeal “by failing to address, or submit evidence supporting, standing in its opening brief” under Phigenix (FC 2017; “an appellant must identify the relevant evidence demonstrating its standing ‘at the first appropriate’ time, whether in response to a motion to dismiss or in the opening brief’”). The FC panel explained that “[g]iven the global settlement between the parties, Apple should have made” its arguments “in its opening brief” but also that “Phigenix is not…an inflexible rule” (Harris, FC 2005 (“case-by-case discretion”)). Apple argued that MedImmune (US 2007) “holds that its ongoing payment obligations as a condition for certain rights provides standing, irrespective of the other patents in the license agreement”. The FC panel disagreed in this case, writing that “Apple has not alleged that the validity of the patents at issue will affect its contractual rights (i.e., its ongoing royalty obligations)” which “is fatal to establish standing under the reasoning of MedImmune” and failed to “identify any contractual dispute involving its ongoing royalty obligations…that relates to, or could be resolved through a validity determination of, the patents at issue” (“Apple’s assertions amount to little more than an expression of its displeasure with a license provision into which it voluntarily entered.”) The FC panel also found Apple’s arguments regarding “the possibility that Qualcomm may sue Apple for infringing the ‘037 patent or ‘362 patent after the license expires” to be “too speculative to confer standing” (“insufficient to show injury in fact” (JTEKT, FC 2018)). And the FC panel rejected Apple’s arguments that Qualcomm’s refusal to grant “an irrevocable license or other permanent rights…provide standing” and possible litigation as speculation (“devoid of the specificity necessary to show that Qualcomm is likely to assert these particular patents against any particular products”; Prasco, FC 2008). Apple’s argument “that its injury is compounded from the likelihood that 35 U.S.C. [section] 315€ would estop it from arguing” for obviousness of these patents “in future disputes” was also rejected as speculative (AVX, FC 2019 (“We have already rejected invocation of the estoppel provision as a sufficient basis for standing.”); Gen. Elec., FC 2019 (“Where, as here, the appellant does not currently practice the patent claims and the injury is speculative, we have held that the estoppel provision does not amount to an injury in fact.”) Apple’s appeal was therefore dismissed.