On Wednesday, Qualcomm Incorporated filed its response to Apple’s November-filed petition in a case concerning constitutional standing in a patent validity dispute. Qualcomm’s filing says that the Federal Circuit Court of Appeals correctly decided that Apple suffered no concrete injury and therefore could not appeal an inter partes review (IPR) determination concerning two cell phone communication patents by the Patent Trial and Appeal Board (Board).
By way of background, Qualcomm filed lawsuits against Apple accusing it of infringement of various patents in 2017. Thereafter, Apple challenged many of Qualcomm’s asserted patents in IPRs before the Board. The litigants agreed to settle Qualcomm’s suits in 2019, agreeing that Apple’s IPRs would continue through any appeal and that Apple would continue to pay licensing fees for the disputed patents in exchange for Qualcomm’s promise not to sue for the duration of the temporary agreement.
When the Board resolved the IPRs in Qualcomm’s favor, upholding its patents, Apple sought appellate review with the Federal Circuit. The court refused to hear the case for want of standing, explaining that Apple suffered no injury because the validity or invalidity of the patents would not impact Apple’s payment obligations under its licensing agreement pursuant to which it pays royalties for tens of thousands of Qualcomm patents as is.
For its part, Apple said that the decision improperly narrows constitutional standing. Amicus weighed in on its behalf, adding that the decision frustrates the public’s interest in eliminating invalid patents.
In this week’s opposition, the respondent encourages the Supreme Court to decline the case as “Apple’s petition presents no important or unsettled legal issues.” The filing says that Apple offers no evidence that it would suffer harm following the patents’ invalidation: no evidence that its royalty payments would decrease, that it would eliminate the need for a licensing agreement, or that Apple “will be selling products that could likely infringe the patents when the license agreement expires years down the road.”
Qualcomm notes that a 2021 Federal Circuit holding, ModernaTx Inc. v. Arbutus Biopharma Corp., re-emphasizes that a patent portfolio licensee can have standing to challenge an individual patent in the portfolio, depending on the facts specific to that case. The dispute was correctly decided by the Federal Circuit, Qualcomm says, urging that the holding is “horn-book law needing no clarification by this Court.”
Apple is represented by Wilmer Cutler Pickering Hale and Dorr and Fish & Richardson P.C., and Qualcomm by Baker Botts L.L.P.
