Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in Apple Inc. v. Qualcomm Incorporated, Nos. 2020-1561, -1642 (Apr. 7, 2021), dismissing for lack of standing Apple’s appeals of two final decisions of the Patent Trial and Appeal Board in inter partes review (IPR) proceedings.
Qualcomm sued Apple for infringing claims of two Qualcomm patents. Apple sought, and the Board instituted, IPRs of both patents. In its final written decisions, the Board held Apple did not prove the challenged patent claims were obvious. Around the same time, and prior to any appeal, Apple and Qualcomm settled all litigation between them and Qualcomm’s suit was dismissed with prejudice. Notwithstanding the dismissal of the litigation, Apple appealed the Board’s final written decisions of nonobviousness in the IPRs.
The Federal Circuit held Apple lacked standing to maintain the appeals. Although Apple failed to address standing in its opening brief, the Court exercised its discretion to consider the standing issue on the merits because it had been fully briefed, there was no prejudice to Qualcomm, and the question impacted these and other appeals. Addressing the merits of the standing issue, the Court rejected the three arguments Apple advanced in support of its alleged standing to appeal. First, the Court rejected Apple’s argument that it had standing based on ongoing payment obligations under the license agreement executed as part of settlement because Apple did not (1) allege the validity of the patents would affect its ongoing payment obligations or (2) identify any contractual dispute involving those obligations. Second, the Court rejected Apple’s argument that it had standing based on the possibility that Qualcomm could sue for infringement in the future, after the 6-year license term expires. The Court found this possibility too speculative to establish standing, even in view of Qualcomm’s general history of asserting patents against Apple. Finally, the Court rejected Apple’s argument that it had standing because the estoppel provision in 35 U.S.C. § 315(e) would prevent it from arguing the patents are obvious in future disputes. The Court explained it has already rejected other parties’ attempts to invoke that provision to establish standing, and that the speculative nature of Apple’s claims about possible future enforcement activities after the expiration of the license agreement is determinative of the issue. Having concluded Apple failed to establish standing to appeal the Board’s decision, the Court dismissed the appeal.