SCOTUS denies another Apple bid
The US Supreme Court has again declined to hear Apple’s attempt to revive its clash with Qualcomm, despite a settlement between the parties.
Yesterday, October 3, the Supreme Court denied Apple’s petition, leaving in place a six-year licensing deal the pair entered into three years ago.
Qualcomm had sued Apple in 2017—at the US District Court for the Southern District of California—for infringing claims of several Qualcomm patents. In response, Apple sought inter partes reviews of the patents, but the Patent Trial and Appeal Board ruled that Apple did not prove the claims in the patent as obvious.
Prior to filing 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 Qualcomm’s patents, while allowing Apple’s inter partes reviews to continue through any appeal.
Apple then sought to appeal against the PTAB findings, but the US Court of Appeals for the Federal Circuit dismissed the appeals for lack of standing in light of the settlement.
Apple had argued that it had standing to appeal based on three circumstances: its ongoing payment obligations that are a condition for certain rights in the licence agreement; the threat that it will be sued for infringing the patents after the expiration of the agreement; and the fear that 35 USC § 315(e) would bar it from arguing the obviousness of the patents in future disputes.
“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 Moore at the time.
Last year, the Federal Circuit denied Apple’s request for an en banc rehearing of its decision, prompting Apple to file a petition with the Supreme Court.
In its petition, Apple argued that “under the Federal Circuit’s approach, the only certain way for a licensee to challenge patent validity in comparable situations is to repudiate the entire portfolio licence agreement and face the serious consequences of a likely infringement suit—a result that this court expressly rejected in MedImmune”.
Qualcomm, in response, claimed: “As petitioner openly concedes, the petition in this case is ‘materially identical’ to the one in Apple v Qualcomm. This court recently denied certiorari in that case. As Apple has effectively admitted, denial is the correct course here as well.”
In June this year, the Supreme Court also turned away Apple’s appeal of a lower court ruling in related case that challenged two Qualcomm patents. In that case, the Supreme Court invited the US solicitor general for her views on the grounds to appeal a decision of patent validity.
