According to a friend-of-the-court brief filed last Friday, three organizations that represent high-technology startups have thrown their weight behind Apple Inc. in asking the nation’s high court to review the patent case between Apple and Qualcomm. At the core of the dispute is whether the Federal Circuit Court of Appeals correctly decided that Apple lacked standing to challenge two of Qualcomm Incorporated’s patents in appealing an inter partes review (IPR) finding upholding the patents’ validity.
By way of background, Apple’s November-filed petition explains that in 2017, respondent Qualcomm filed multiple suits against Apple for allegedly infringing several patents, including the two at issue in this case. During the pendency of those suits, Apple challenged many of those patents in IPRs before the Patent Trial and Appeal Board (Board).
The parties settled Qualcomm’s suits in 2019, agreeing that Apple’s IPRs would continue through any appeal. They also entered into a temporary licensing agreement pursuant to which Apple would make ongoing payments for a suite of patents, including the patents-in-suit, in exchange for Qualcomm’s pledge not to sue while the agreement was in force.
After the Board issued decisions in Apple’s IPRs determining the patents’ challenged claims not unpatentable, Apple appealed, but the Federal Circuit dismissed the cases for lack of Article III standing. Specifically, the court recognized that under precedent, “a licensee’s payment of royalties under protest to avoid the threat of an infringement suit does not eliminate standing,” but distinguished the instant case because “Apple pays royalties for ‘tens of thousands’ of patents in the Qualcomm portfolio and the invalidity of the patents-in-suit would not affect Apple’s payment obligations under the license agreement.”
Non-profit amici Engine Advocacy, The Public Interest Patent Law Institute, and the App Association argue that the appellate court’s narrowing of the standing doctrine contravenes Supreme Court precedent, creates disagreement within the Federal Circuit itself, and frustrates the public’s interest in eliminating invalid patents.
As to the public interest argument, the brief says that if allowed to stand, the ruling will deny meritorious applicants the chance to have patent cases reviewed. This, the amici argue, flies in the face of the congressional regulatory scheme setting up a review protocol for questionable patents. From a policy perspective, the non-profits say the decision will impair innovation and economic development, especially in the startup and small business context.