No. 21-746

Apple Inc. v. Qualcomm Incorporated

Lower Court: Federal Circuit
Docketed: 2021-11-19
Status: Denied
Type: Paid
CVSGAmici (5)Relisted (2) Experienced Counsel
Tags: article-iii civil-procedure civil-rights due-process inter-partes-review license-agreement patent patent-challenge patent-validity standing takings
Key Terms:
Antitrust Patent JusticiabilityDoctri
Latest Conference: 2022-06-23 (distributed 2 times)
Question Presented (AI Summary)

Whether a licensee has Article III standing to challenge the validity of a patent covered by a license agreement that covers multiple patents

Question Presented (OCR Extract)

QUESTION PRESENTED In MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007), this Court held that, under Article III, a patent licensee may challenge the validity of a patent covered by a license agreement even where the licensee pays royalties that eliminate any imminent threat of suit. The Court recognized that royalty payments are coerced when, considering all the circumstances, the licensee makes those payments to avoid the threat of an infringement suit. In this case, Apple makes payments to respondent Qualcomm Incorporated under a license agreement that covers a portfolio of patents. The U.S. Court of Appeals for the Federal Circuit nevertheless held that Apple lacks Article III standing to challenge the validity of two of those patents in appeals from inter partes reviews—a mechanism that Congress created precisely to facilitate challenges to questionable patents, including through appeal—because the license agreement covers multiple patents, such that invalidation of the two patents-in-suit would not by itself alter Apple’s payment obligations under the license agreement. The question presented is: Whether a licensee has Article III standing to challenge the validity of a patent covered by a license agreement that covers multiple patents. @

Docket Entries

2022-06-27
Petition DENIED.
2022-06-07
DISTRIBUTED for Conference of 6/23/2022.
2022-06-06
Supplemental brief of petitioner Apple Inc. filed. (Distributed)
2022-05-24
Brief amicus curiae of United States filed.
2022-02-22
The Solicitor General is invited to file a brief in this case expressing the views of the United States.
2022-02-02
DISTRIBUTED for Conference of 2/18/2022.
2022-02-01
Reply of petitioner Apple Inc. filed. (Distributed)
2022-01-19
Brief of respondent Qualcomm Incorporated in opposition filed.
2021-12-20
Brief amicus curiae of Thales filed.
2021-12-20
Brief amicus curiae of Unified Patents, LLC filed.
2021-12-20
Brief amici curiae of Senator Patrick Leahy and Congressman Darrell Issa filed.
2021-12-17
Brief amici curiae of Engine Advocacy, et al. filed.
2021-12-03
Motion to extend the time to file a response is granted and the time is extended to and including January 19, 2022.
2021-12-02
Motion to extend the time to file a response from December 20, 2021 to January 19, 2022, submitted to The Clerk.
2021-11-17
Petition for a writ of certiorari filed. (Response due December 20, 2021)
2021-09-09
Application (21A39) granted by The Chief Justice extending the time to file until November 17, 2021.
2021-09-03
Application (21A39) to extend the time to file a petition for a writ of certiorari from October 18, 2021 to November 17, 2021, submitted to The Chief Justice.

Attorneys

Apple Inc.
Mark Christopher FlemingWilmerHale, Petitioner
Mark Christopher FlemingWilmerHale, Petitioner
Engine Advocacy, The Public Interest Patent Law Institute, and ACT | The App Association
Christopher Theodore BavitzCyberlaw Clinic, Harvard Law School, Amicus
Christopher Theodore BavitzCyberlaw Clinic, Harvard Law School, Amicus
Qualcomm Incorporated
Aaron Michael StreettBaker Botts, L.L.P., Respondent
Aaron Michael StreettBaker Botts, L.L.P., Respondent
Senator Patrick Leahy; Congressman Darrell Issa
William Henry Burgess IVKirkland & Ellis LLP, Amicus
William Henry Burgess IVKirkland & Ellis LLP, Amicus
Thales
Michael Lawrence KeeleyAxinn, Veltrop & Harkrider LLP, Amicus
Michael Lawrence KeeleyAxinn, Veltrop & Harkrider LLP, Amicus
Unified Patents, LLC
William G. JenksJenks IP Law, Amicus
William G. JenksJenks IP Law, Amicus
United States
Elizabeth B. PrelogarSolicitor General, Amicus
Elizabeth B. PrelogarSolicitor General, Amicus