SCOTUS asks Solicitor General’s view on Apple v Qualcomm
The US Supreme Court has asked the Solicitor General Elizabeth Prelogar for her views on the grounds to appeal a decision of patent validity in patent litigation between Apple and Qualcomm.
The dispute stems from a global infringement lawsuit between the two companies in which Apple challenged the validity of several Qualcomm patents at the US Patent and Trademark Office.
On appeal, the US Court of Appeals for the Federal Circuit in April last year ruled that Apple did not have the standing to dispute two of the patent claims as it had signed a settlement agreement to cease patent litigation with Qualcomm in 2019.
The 2019 settlement saw Apple make an initial undisclosed payment—estimated to be worth around $4.5 billion—to Qualcomm to continue using its patented technology as part of a six-year license agreement.
In the Federal Circuit ruling, Judge Kimberly Moore said: "Ultimately, Apple's assertions amount to little more than an expression of its displeasure with a license provision into which it voluntarily entered. Such allegations do not establish Article III standing."
To bring a lawsuit in federal court a plaintiff is required to demonstrate Article III standing, which proves that they have a stake in the outcome of the suit.
The court later dismissed another appeal in November 2021, with the majority ruling that Apple could not bring an appeal due to the settlement, although judge Pauline Newman dissented from the majority opinion.
Apple submitted a petition to the Supreme Court a week later, asking the court to consider whether a licensee has Article III standing to challenge the validity of a patent covered by a license agreement that covers multiple patents.
It pointed towards a decision in MedImmune v Genentech, in which the Supreme Court ruled that, under Article III, a patent licensee may challenge the validity of a patent covered by a license agreement, even an agreement where the licensee pays royalties that eliminate “any imminent threat” of a lawsuit.
In its response, Qualcomm said that Apple had failed to present any evidence establishing its Article III standing in the petition.
“Apple purports to challenge two patents’ validity, but it cannot identify a single concrete consequence that would follow from their invalidation,” Qualcomm claimed.
Advocacy bodies including Unified Patents and Engine Advocacy, alongside Senator Patrick Leahy and Thales Group submitted amicus briefs asking the Supreme Court to grant Apple’s petition for a writ of certiorari.
Now, the Supreme Court is calling upon Prelogar for her input as to whether Apple’s petition should be considered.
In 2018, the court asked the solicitor general for views on whether RPX had standing to pursue an appeal of a patent validity challenge against ChanBond.
