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Licensee Lacks Standing to Appeal an Adverse IPR Decision Based On Royalty Payments for a Patent Portfolio and a Speculative Post-License Lawsuit

| Tiffany YoungJustin J. Gillett

APPLE, INC. v. QUALCOMM, INC.

Before Moore, Reyna, and Hughes. Appeal from the Patent Trial and Appeal Board.

Summary: Apple lacked standing to appeal an IPR decision upholding patents it licenses from Qualcomm, despite Apple’s royalty payments for a portfolio including the patents at issue and the possibility that Qualcomm could assert those patents against Apple after the license expires.

Qualcomm sued Apple for patent infringement of two Qualcomm patents. In response, Apple petitioned for inter partes review (IPR) of Qualcomm’s patents. The Patent Trial and Appeal Board issued final written decisions holding Apple did not prove the challenged claims in either patent would have been obvious. Apple and Qualcomm then settled all litigation between the two companies worldwide. The settlement included a six-year license agreement for a large portfolio of patents, including the patents at issue. Apple then appealed the Board’s final written decisions.

The Federal Circuit found that Apple failed to establish standing to bring its appeal. First, it rejected Apple’s argument that its payment of royalties for the portfolio of patents confers standing to challenge the validity of individual patents in the portfolio, reasoning that the validity of the two challenged patents would not impact Apple’s royalty obligations. Second, the Court rejected Apple’s assertion of standing based on the possibility that Qualcomm may sue Apple for infringing the patents at issue after the license expires, finding Apple’s assertions lacked the specificity necessary to show that Qualcomm is likely to assert the particular patents against particular products that would be sold after the expiration of the license agreement. Third, the Federal Circuit rejected any contention that the harm Apple may face from IPR estoppel confers standing, again noting Apple failed to show it will likely be engaging in activities that could give rise to a lawsuit based on the patents at issue. The Court therefore dismissed the appeal.

Editor: Paul Stewart