Latest Federal Court Cases, 11/15/21
Apple Inc. v. Qualcomm Inc., Appeal Nos. 2020-1683, -1763, -1764, 1827 (Fed. Cir. Nov. 10, 2021)
Our Case of the Week reinforces a developing body of law concerning standing to appeal from an adverse PTAB decision in an IPR. This is the second such decision arising from a global settlement between Apple and Qualcomm this year. We wrote about the first case, in April this year, here. As with that case, the Federal Circuit affirmed that Apple has no standing to appeal adverse IPR decisions.
Qualcomm sued Apple for infringement of a number of patents. Apple filed petitions for IPR at the Patent Office. In 2019, the parties settled their disputes pursuant to a six-year global patent license agreement with a two-year extension option. That resulted in dismissal of the case with prejudice. Ultimately, the PTAB found that Apple had failed to prove various claims unpatentable.
In Apple I, in April this year, the Federal Circuit dismissed the appeal, holding that Apple did not have standing. Apple had submitted declarations to suggest that it continued to be harmed by the patents, including in relation to “certain rights in the license agreement,” and potential future lawsuit after the license agreement expired. The Federal Circuit found that these declarations failed to provide sufficient proof to establish injury sufficient to meet the requirements for standing.
Apple separately appealed from other IPR decisions, resulting in the instant appeal. Qualcomm again dismissed for lack of standing, and Apple submitted the same declarations it provided in Apple I. Merits briefing was nearly complete by the time Apple I issued.
The Federal Circuit had no difficulty disposing of the instant appeal, finding that “the writing is already on the wall” and that it did “not write on a blank slate in assessing Apple’s standing here,” given Apple I. In two paragraphs of analysis, the Court held it had no capacity to review Apple I, and this dismissed the instant appeal.
Apple also asked the Court, should it decide it had no jurisdiction, to vacate the Board’s decisions to avoid “any doubt about the applicability of estoppel.” The Court declined to do so. It noted that Apple asked for this relief only in its reply brief, and not in its opening brief. It also found the argument “misplaced,” relying on a case involving mootness as opposed to standing. The Court held that Apple never had standing, and that the case did not become moot during the pendency of the appeal. The Court also found that vacatur would be improper given that the standing issue was caused by Apple’s voluntary settlement agreement, and “[M]ootness by reason of settlement does not justify vacatur of a judgment under review.”
Judge Newman dissented from the Panel’s 9-page decision with a 13-page opinion. She would have held that Apple has standing, at least in part because the patent terms are longer than the license agreement, and Apple remains under threat of suit for the tail end of the license period.
A copy of the opinion can be found here.
By Nika Aldrich
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ROHM Semiconductor USA, LLC v. MaxPower Semiconductor, Inc., Appeal No. 2021-1709 (Fed. Cir. Nov. 12, 2021)
In an appeal from the United States District Court for the Northern District of California, the Federal Circuit addressed whether the district court erred in holding that the parties agreed to arbitrate whether a patent dispute fit within the arbitrability clause in an agreement. Applying Ninth Circuit law, the Federal Circuit affirmed the district court’s ruling, holding that the parties clearly and unmistakably delegated authority to the arbitrator to arbitrate arbitrability. In doing so, the Federal Circuit re-affirmed the near universal principle that in contracts between sophisticated parties, incorporation of rules with a provision on the subject is normally sufficient “clear and unmistakable” evidence of the parties’ intent to delegate the question of arbitrability to an arbitrator.
A copy of the opinion can be found here.