A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.

Apple Inc. v. Qualcomm Inc., Nos. 2020-1683, -1763, -1764, -1827 (Fed. Cir. (PTAB) Nov. 10, 2021). Opinion by Prost, joined by Stoll. Dissenting opinion by Newman.

The facts of this appeal mirror the facts of an earlier appeal by Apple (Apple I). In both Apple I and this appeal, Qualcomm had sued Apple in district court alleging infringement of various patents, and Apple had responded with IPR petitions challenging certain claims. Qualcomm and Apple then settled and entered into a six-year license agreement with ongoing payment during the term. After the settlement, the Patent Trial and Appeal Board determined that Apple failed to prove that the challenged claims are unpatentable. Apple appealed.

In Apple I, Qualcomm had alleged that Apple lacked standing for the appeal. The Federal Circuit agreed and dismissed the appeal. Now, in this new appeal by Apple involving “identical operative facts,” the Federal Circuit reached the same conclusion.

In this appeal, Apple sought to distinguish Apple I because the court’s opinion in Apple I “did not explain why the threat of liability, if Apple ceases the ongoing payment and the [license] agreement is terminated, is not a sufficient injury to support standing.” The Federal Circuit noted that it could not “turn back the clock on Apple I” because, “as a panel, we’re bound by stare decisis” and thus “can’t defy Apple I by dealing differently with its double.” Thus, the Federal Circuit dismissed Apple’s appeal.

Judge Newman dissented, stating that licensees may challenge a patent’s validity without loss of Article III standing due to the license. In this case, Qualcomm had refused to give Apple a license for the life of the patents, instead limiting the license to an extendable six-year term. Judge Newman noted that “Apple reasonably states that the accused products are likely to continue to be in commerce when the license expires in 2025.” Judge Newman expressed that Apple therefore has standing to challenge the validity of the licensed patents. 

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