17 F.4th 1131
Fed. Cir.2021Background
- Qualcomm sued Apple in the Southern District of California for patent infringement; Apple petitioned the PTO for inter partes review (IPR) of the accused patents.
- The parties settled and executed a six-year global patent license (with a two-year extension option), and the district-court infringement suit was dismissed with prejudice.
- The PTAB issued final written decisions upholding some claims and denying Apple’s challenges to others; Apple appealed to the Federal Circuit.
- This appeal involves the same operative facts and the same declarations on standing as in a prior panel decision (Apple I), which dismissed a prior Apple appeal for lack of Article III standing.
- The majority panel here, bound by Apple I, dismissed these consolidated appeals for lack of Article III standing and denied Apple’s request to vacate the PTAB decisions under Munsingwear because the settlement was voluntary and the problem is standing (not mootness).
- Judge Newman dissented, arguing (inter alia) that licensees retain standing to challenge patent validity under Lear/MedImmune, that the AIA’s appeal and estoppel provisions preserve a concrete interest, and that vacatur would be appropriate if appeals are barred.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Apple has Article III standing to appeal PTAB decisions after settling and taking a finite license | Apple: ongoing royalty obligations and risk of future suit upon license expiration create a concrete, imminent injury (MedImmune) | Qualcomm: the settlement/license removed a cognizable injury; Apple’s evidence doesn’t tie payments or plans to the specific patents | Dismissed for lack of Article III standing; panel bound by Apple I |
| Whether Apple’s submitted declarations show an imminent risk of future infringement litigation | Apple: declarations show continuing activity and concrete risk | Qualcomm: declarations are sparse, fail to mention the patents or plans, and do not demonstrate imminence | Declarations insufficient under Apple I; standing not established |
| Whether vacatur of the PTAB decisions is warranted if court lacks jurisdiction (Munsingwear) | Apple: vacatur would prevent estoppel and clear the path for future challenges | Qualcomm: Munsingwear addresses mootness, not standing; settlement was voluntary so vacatur is unwarranted (Bancorp) | Vacatur denied: the issue is lack of standing at outset, and voluntary settlement precludes Munsingwear vacatur |
| Whether the AIA’s appeal and estoppel provisions (and Lear/MedImmune principles) independently confer standing | Apple/Dissent: statutory right to appeal and §325/§315 estoppel create concrete, reviewable interests; licensee precedent preserves standing | Qualcomm/Majority: statutory procedures cannot overcome Article III’s injury requirement where no concrete injury shown | Majority: statutory rights do not cure the lack of Article III injury; dissent argues the contrary |
Key Cases Cited
- Apple Inc. v. Qualcomm Inc., 992 F.3d 1378 (Fed. Cir. 2021) (prior panel decision dismissing similar Apple appeal for lack of Article III standing)
- MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007) (licensee may seek declaration of patent invalidity without breaching license)
- Spokeo, Inc. v. Robins, 578 U.S. 330 (2016) (Article III injury-in-fact requirements)
- Lujan v. Defenders of Wildlife, 504 U.S. 555 (1992) (concrete, particularized, actual or imminent injury requirement)
- United States v. Munsingwear, Inc., 340 U.S. 36 (1950) (vacatur of underlying judgment when case becomes moot in certain circumstances)
- U.S. Bancorp Mortg. Co. v. Bonner Mall P’ship, 513 U.S. 18 (1994) (voluntary settlement that causes mootness generally precludes Munsingwear vacatur)
- Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016) (IPR petitioners may lack Article III standing to appeal PTAB decisions)
- Lear, Inc. v. Adkins, 395 U.S. 653 (1969) (abolishing licensee estoppel; licensees may challenge patent validity)
- Already, LLC v. Nike, Inc., 568 U.S. 85 (2013) (settlement terms can extinguish controversy; test whether plaintiff could reasonably be expected to resume enforcement)