In response to the Supreme Court’s request for her opinion, Solicitor General Elizabeth Prelogar, on behalf of the United States, argued that the high court should deny Apple’s petition for a writ of certiorari. Tuesday’s brief contends that the Federal Circuit correctly decided the jurisdictional issue in the high-profile, high-value patent dispute between semiconductor titan Qualcomm and Apple.
Qualcomm sued Apple in 2017 over alleged infringement of several patents. Apple filed an inter partes review (IPR) petition challenging the validity of the Qualcomm patents and the parties agreed to settle the litigation.
They also stipulated that Apple’s IPR challenge would continue through any appeal and that Apple would continue to pay licensing fees for the contested patents in exchange for Qualcomm’s promise not to sue for the duration of the agreement. The license agreement is set to expire in 2025, or 2027, if extended, both of which are before the expiration dates of the two disputed patents.
After the United States Patent and Trademark Office (USPTO) upheld the patents’ validity, Apple appealed the decision to the Federal Circuit, which dismissed the case for want of standing. The appellate court said that Apple essentially conceded, and did not introduce evidence to dispute, that its payment obligations under the license agreement would remain the same regardless of the two patents’ validity. As such, the court opined there was no judicable controversy.
Apple sought Supreme Court review and Qualcomm opposed, arguing that the Federal Circuit got it right. Amici backed Apple, asserting that the appellate court’s narrowing of the standing doctrine flies in the face of Supreme Court precedent, creates inconsistency within the Federal Circuit, and improperly limits the public’s interest in eliminating invalid patents.
Now, the United States says the high court should leave the appellate decision in place, arguing that it “correctly held that petitioner had not established Article III standing to challenge the two patents at issue here.”
The amicus brief contends that the Federal Circuit’s “case-specific determination” reflected the parties’ license agreement. Further, it properly pointed to the fact that Apple put forward no evidence showing that the patents’ invalidity would impact its licensing payments.
“Rather than identify case-specific evidence of concrete harm, petitioner advocates a per se rule that a licensee with ongoing royalty payment obligations has standing to challenge every patent it has licensed, so long as it would be subject to an infringement suit if it repudiated the agreement,” the brief says. The Solicitor General also presses that the rule is inconsistent with established standing principles and “finds no support” in the Supreme Court’s 2007 decision in MedImmune Inc. v. Genentech Inc.
Apple is represented by Wilmer Cutler Pickering Hale and Dorr and Fish & Richardson P.C., and Qualcomm by Baker Botts L.L.P.
