Apple’s appeals of IPR decisions dismissed for lack of Article III standing

Apple Inc. v. Qualcomm Incorporated

Docket No. 2020-1561, -1642 (IPR2018-01279, -01252) (


April 7, 2021

Brief Summary:  Apple’s appeal of IPR FWDs dismissed due to global settlement agreement with Qualcomm (e.g., “displeasure with a license provision” does “not establish Article III standing”. Summary:  Apple appealed IPR final written decisions (FWDs) holding Apple did not prove the challenged claims of Qualcomm’s US 7,844,037 and 8,683,362 would have been obvious.  The FC panel opinion explains that “[b]efore the filing of these appeals, Apple and Qualcomm settled all litigation between the companies worldwide” leading to the DC’s dismissal with prejudice, but that “Apple, nevertheless, appeals the Board’s” FWDs.  The FC panel also explained that “[w]hile nearly any person may seek an inter partes review, an appellant must ‘supply the requisite proof of an injury in fact when it seeks review of an agency’s final action in a federal court’” (Phigenix, FC 2017; Cuozzo, US 2016 (“not every party” in an IPR “will have Article III standing to appeal a Board final written decision”)).  The “global settlement” included a six-year license agreement (with a possible two year extension) including the patents at issue in this appeal, which Apple characterized as a “covenant-not-to-sue”.  Apple argued it has standing because of:  “its ongoing payment obligations that are a condition for certain rights in the license agreement” (Medimmune, US 2007 (“Medimmune was not required to cease its contract payments…in order to resolve its disputed contract rights (limiting the royalties to products that cover a valid patent)”); “the threat that Apple will be sued for infringing the ’037 patent and ’362 patent after the expiration of the license agreement”, and “the estoppel effects of 35 U.S.C. § 315 on future challenges to the validity of the ’037 patent and ’362 patent.”  The FC panel concluded that Apple’s payment obligation arguments “amount to little more than an expression of its displeasure with a license provision into which it voluntarily entered” and “do not establish Article III standing”.  It rejected Apple’s second argument since the “possibility of suit is too speculative to confer standing” and Apple did not describe “any plans to engage in conduct after the expiration of the license agreement that might lead to an infringement suit” (JTEKT, FC 2018 and Prasco, FC 2008; refused to take judicial notice of future sales (In re Kahn, FC 2006)).  The FC panel also distinguished the dismissal without prejudice in Grit Energy (FC 2020) and the DC’s dismissal with prejudice here.   It also rejected Apple’s estoppel arguments, explaining that it “already rejected invocation of the estoppel provision as a sufficient basis for standing” (AVX, FC 2019; GE, 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.”)).  Thus, Apple’s appeals were dismissed.

This entry was posted in Appeal, Article III disputes, Inter Parties Review (IPR), IPR, Licensing. Bookmark the permalink.

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