Fed Circ denies Apple en banc redo of Qualcomm decision
The US Court of Appeals for the Federal Circuit has denied Apple’s request for an en banc rehearing of its decision that Apple lacked standing to appeal an inter partes review that upheld two Qualcomm patents.
Apple and Qualcomm previously settled the case, but Apple sought to resurrect the dispute in April by asking the Federal Circuit to appeal the Patent Trial and Appeal Board’s (PTAB) final inter partes review decision. When that request was denied, it requested an en banc rehearing of the denial on July 5.
The petition for an en banc rehearing argued the panel’s decision was contrary to decisions of the US Supreme Court in MedImmune v Genentech—a case cited by the Federal Circuit in its decision to dismiss Apple’s prior appeal.
Apple said that the MedImmune decision affirmed that “licensees’ interests in patent validity are sufficient enough to grant standing”.
Qualcomm said that Apple had failed to offer evidence to support its standing and that the MedImmune claim did not support its argument, asking the court to deny the rehearing.
Apple’s petition was denied by the Federal Circuit on Tuesday, July 20th.
Inter partes denial
The Federal Circuit shot down Apple’s request to appeal a final inter partes review on April 7 as Apple failed to establish its standing in light of the fact that it had already settled with Qualcomm.
The PTAB decision had dismissed Apple’s arguments that claims of two of Qualcomm’s smartphone patents were obvious.
The claims in dispute were 1-14 and 16-18 of Qualcomm’s US patent number 7,844,037 and claims 1-6 and 8-20 of its US patent number 8,683,362.
“Ultimately, Apple’s assertions amount to little more than an expression of its displeasure with a licence provision into which it voluntarily entered,” wrote Federal Circuit Judge Kimberly Moorel.
Case history
Qualcomm had initially sued Apple in the US District Court for the Southern District of California for infringing claims of the ‘037 and ‘362 patents in 2017.
In response, Apple sought an inter partes review of the claims in both patents, but the PTAB ruled that Apple did not prove the claims in either patent as obvious.
Prior to filing the appeals, Apple and Qualcomm settled all litigation between them in April 2019. The agreement saw Qualcomm drop its district court suit and Apple enter into a six-year agreement to license the patents.
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