992 F.3d 1378
Fed. Cir.2021Background
- Qualcomm sued Apple for infringement of U.S. Pat. Nos. 7,844,037 (’037) and 8,683,362 (’362); Apple petitioned for inter partes review (IPR) of various claims in both patents.
- The Patent Trial and Appeal Board (PTAB) issued final written decisions finding Apple did not prove the challenged claims would have been obvious; Apple appealed those decisions to the Federal Circuit.
- Before appeal, Apple and Qualcomm executed a global settlement including a six‑year license (with possible two‑year extension) covering the patents at issue, and the district court infringement case was dismissed with prejudice.
- Apple nevertheless appealed the PTAB decisions and asserted Article III standing based on: (1) ongoing payment obligations under the license, (2) a future risk of suit after license expiration, and (3) prospective estoppel under 35 U.S.C. § 315(e).
- The Federal Circuit exercised discretion to decide standing (despite Apple’s late presentation of evidence), allowed Qualcomm a sur‑reply, and evaluated Apple’s submitted declarations and the license terms.
- The court held Apple failed to establish Article III standing on any asserted theory and dismissed the appeals; costs were awarded to Qualcomm.
Issues
| Issue | Apple’s Argument | Qualcomm’s Argument | Held |
|---|---|---|---|
| Waiver of standing evidence | Apple submitted standing evidence late but argued it nonetheless supports review | Qualcomm argued Apple waived standing by not presenting evidence in opening brief | Court exercised discretion to reach standing (no prejudice; fully briefed) and permitted Qualcomm sur‑reply |
| Standing from ongoing license payments (MedImmune) | MedImmune permits a licensee to challenge patent validity without breaching license; Apple’s ongoing payments create injury | Qualcomm: license covers tens of thousands of patents; validity of these two patents does not affect Apple’s payment obligations | MedImmune does not confer standing here—Apple failed to show these patents affect its contractual payment rights |
| Standing from risk of future suit after license expiry | Apple warned it may be sued when license ends (2025/2027), so there is imminent injury | Qualcomm: risk is speculative; Apple provided no concrete plans to engage in infringing activity | Too speculative—Apple offered no evidence of concrete future plans; no injury in fact |
| Standing from estoppel under 35 U.S.C. § 315(e) | IPR estoppel would prevent Apple from asserting obviousness later, causing injury | Qualcomm: estoppel alone is insufficient absent a concrete risk of future suit; precedent rejects estoppel as independent standing basis | Estoppel does not supply standing here because Apple failed to show likely future activity that would be estopped |
Key Cases Cited
- Spokeo, Inc. v. Robins, 136 S. Ct. 1540 (2016) (standing requires concrete, particularized, and actual or imminent injury)
- Lujan v. Defenders of Wildlife, 504 U.S. 555 (1992) (three‑part Article III standing test)
- MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007) (licensee need not breach license to seek declaratory judgment of patent invalidity)
- Phigenix, Inc. v. Immunogen, Inc., 845 F.3d 1168 (Fed. Cir. 2017) (appellant must present evidence of standing at the earliest appropriate time)
- Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016) (recognizing that IPR petitioners may lack Article III standing to appeal)
- Ericsson Inc. v. TCL Commc’n Tech. Holdings Ltd., 955 F.3d 1317 (Fed. Cir. 2020) (appellate discretion to reach waived issues when fully briefed)
- JTEKT Corp. v. GKN Auto. Ltd., 898 F.3d 1217 (Fed. Cir. 2018) (no standing absent concrete plans creating substantial risk of future infringement)
- AVX Corp. v. Presidio Components, Inc., 923 F.3d 1357 (Fed. Cir. 2019) (estoppel provision alone is insufficient for Article III standing)