Apple loses bid for second bite at Qualcomm patents after license

An Apple logo is pictured in an Apple store in Paris, France September 17, 2021. REUTERS/Gonzalo Fuentes

  • Apple can’t revive challenge because of Qualcomm settlement
  • Ruling nearly identical to April decision for Qualcomm
  • Dissent says Apple can challenge based on future litigation risk

(Reuters) – A U.S. appeals court on Wednesday rebuffed for the second time Apple Inc’s attempt to revive challenges to chipmaker Qualcomm Inc’s mobile-phone technology patents.

In a 2-1 opinion, the U.S. Court of Appeals for the Federal Circuit said Apple couldn’t bring the appeal because of the companies’ 2019 resolution of a global patent dispute, which gave Apple a license to tens of thousands of Qualcomm patents.

A different Federal Circuit panel in April unanimously rejected another Apple challenge to related Qualcomm patents in a similar case.

“We do not write on a blank slate in assessing Apple’s standing here,” U.S. Circuit Judge Sharon Prost said Wednesday. “The writing is already on the wall.”

Qualcomm sued Apple in San Diego federal court in 2017, alleging its iPhones, iPads and Apple Watches infringed a variety of mobile-technology patents as part of a broader dispute between the two companies.

Apple then challenged the validity of the three patents at issue in this case at the U.S. Patent Trial and Appeal Board. The board found the patents valid in 2020, after the parties had signed the 2019 settlement agreement worth billions of dollars that allowed Apple to continue using Qualcomm chips in its products.

Apple appealed, and argued the Federal Circuit should revive its challenges despite the settlement because it faced an “imminent risk” of being sued when its six-year license to Qualcomm’s patents expired under the 2019 deal. Qualcomm said Apple lacked standing because the parties had settled, and that the risk to it was speculative.

Prost, like the first Federal Circuit panel, agreed with Qualcomm, and noted the relevant facts of the cases were the same.

Circuit Judge Kara Stoll joined Prost in the majority decision.

In a dissent, Circuit Judge Pauline Newman said Apple had standing to challenge the patents despite the license.

Newman said there is a continuing controversy because Qualcomm could sue Apple again after the license ends in 2025, and it suffers “concrete present harm by having to pay royalties to be free from a patent it believes to be invalid.”

Apple and its attorney Lauren Degnan of Fish & Richardson didn’t immediately respond to a request for comment, nor did Qualcomm, represented by Jonathan Franklin of Norton Rose Fulbright US.

The case is Apple Inc v. Qualcomm Inc, U.S. Court of Appeals for the Federal Circuit, No. 20-1683.

For Apple: Lauren Degnan of Fish & Richardson

For Qualcomm: Jonathan Franklin of Norton Rose Fulbright US

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