No. 21-746
`
`IN THE
`Supreme Court of the United States
`————
`APPLE INC.,
`
`
`
`
`
`Petitioner,
`
`
`
`
`
`
`
`
`
`v.
`QUALCOMM INCORPORATED,
`
`
`
`Respondent.
`————
`On Petition for a Writ of Certiorari
`to the United States Court of Appeals
`for the Federal Circuit
`————
`BRIEF IN OPPOSITION
`————
`MICHAEL HAWES
`AARON M. STREETT
` Counsel of Record
`J. MARK LITTLE
`CLARK OBEREMBT
`ELISABETH C. BUTLER
`BAKER BOTTS L.L.P.
`910 Louisiana St.
`Houston, Texas 77002
`(713) 229-1234
`aaron.streett@bakerbotts.com
`Counsel for Respondent Qualcomm Incorporated
`
`
`
`
`
`
`
`
`
`WILSON-EPES PRINTING CO., INC. – (202) 789-0096 – WASHINGTON, D.C. 20002
`
`
`
`IN THE
`Supreme Court of the United States
`————
`APPLE INC.,
`
`
`
`
`
`Petitioner,
`
`
`
`
`
`
`
`
`
`v.
`QUALCOMM INCORPORATED,
`
`
`
`Respondent.
`————
`On Petition for a Writ of Certiorari
`to the United States Court of Appeals
`for the Federal Circuit
`————
`BRIEF IN OPPOSITION
`————
`MICHAEL HAWES
`AARON M. STREETT
` Counsel of Record
`J. MARK LITTLE
`CLARK OBEREMBT
`ELISABETH C. BUTLER
`BAKER BOTTS L.L.P.
`910 Louisiana St.
`Houston, Texas 77002
`(713) 229-1234
`aaron.streett@bakerbotts.com
`Counsel for Respondent Qualcomm Incorporated
`
`
`
`
`
`
`
`
`
`WILSON-EPES PRINTING CO., INC. – (202) 789-0096 – WASHINGTON, D.C. 20002
`
`
`
`i
`
`QUESTION PRESENTED
`Whether a licensee that offers no evidence linking a pa-
`tent’s invalidation to any concrete consequence for the li-
`censee nevertheless has Article III standing to challenge
`the validity of the licensed patent.
`
`
`
`
`
`
`ii
`
`CORPORATE DISCLOSURE STATEMENT
`Qualcomm Incorporated has no parent company, and
`no publicly held corporation owns 10% or more of its stock.
`
`
`
`
`
`
`iii
`
`TABLE OF CONTENTS
`
`
`QUESTION PRESENTED ................................................ i
`CORPORATE DISCLOSURE STATEMENT ............... ii
`TABLE OF CONTENTS .................................................. iii
`TABLE OF AUTHORITIES ............................................. v
`INTRODUCTION ............................................................... 1
`STATEMENT ...................................................................... 3
`I. Background ................................................................ 3
`II. Proceedings Below .................................................... 4
`REASONS FOR DENYING THE PETITION .............. 6
`I. The Federal Circuit Correctly Applied
`MedImmune And Traditional Standing
`Principles To This Fact-Bound Case ...................... 7
`A. MedImmune clarified how traditional
`standing principles apply in the unique
`licensee context .................................................. 7
`B. The Federal Circuit’s opinion is faithful
`to MedImmune ................................................ 11
`II. Apple Misunderstands MedImmune And
`Exaggerates The Consequences Of The
`Decision Below ........................................................ 14
`A. Neither MedImmune
`nor
`other
`precedents support an exception to
`Article III standing principles for
`patent licensees ................................................ 14
`
`
`
`
`
`iv
`
`B. The Federal Circuit’s decision neither
`limits MedImmune to single-patent
`licenses nor threatens the rights of
`portfolio licensees............................................. 18
`III. Apple’s Non-MedImmune Theories Of
`Standing Fail For Evidentiary Reasons And
`Present No Issues Worthy Of Review .................. 20
`IV. This Case Is An Exceedingly Poor Vehicle
`To Address MedImmune’s Application To
`Portfolio Licenses ................................................... 24
`CONCLUSION .................................................................. 25
`
`
`
`
`
`
`v
`TABLE OF AUTHORITIES
`
`
`
`Page
`
`CASES
`
`Adidas AG v. Nike, Inc.,
`963 F.3d 1355 (Fed. Cir. 2020) .................................... 22
`
`Aetna Life Ins. Co. of Hartford, Conn. v. Haworth,
`300 U.S. 227 (1937) ....................................................... 15
`
`Altvater v. Freeman,
`319 U.S. 359 (1943) .................................................... 8, 16
`
`Amerigen Pharm. Ltd. v. UCB Pharma GmBH,
`913 F.3d 1076 (Fed. Cir. 2019) .................................... 24
`
`Apple Inc. v. Qualcomm Inc.,
`17 F.4th 1131 (Fed. Cir. 2021) .................................. 5, 23
`
`Arizonans for Official English v. Arizona,
`520 U.S. 43 (1997) ......................................................... 24
`
`AVX Corp. v. Presidio Components, Inc.,
`923 F.3d 1357 (Fed. Cir. 2019) ............................... 22, 23
`
`Cardinal Chem. Co. v. Morton Int’l, Inc.,
`508 U.S. 83 (1993) .................................................... 16, 17
`
`Clapper v. Amnesty Int’l USA,
`568 U.S. 398 (2013) ....................................................... 22
`
`Cuozzo Speed Techs., LLC v. Lee,
`579 U.S. 262 (2016) ......................................................... 3
`
`Cutter v. Wilkinson,
`544 U.S. 709 (2005) ....................................................... 23
`
`
`
`
`
`vi
`TABLE OF AUTHORITIES—Continued
`
`
`
`
`Diamond v. Charles,
`476 U.S. 54 (1986) ......................................................... 15
`
`Page
`
`Gen. Elec. Co. v. Raytheon Techs. Corp.,
`983 F.3d 1334 (Fed. Cir. 2020) .................................... 22
`
`Grit Energy Sols., LLC v. Oren Techs., LLC,
`957 F.3d 1309 (Fed. Cir. 2020) .................................... 12
`
`Hydro Inv’rs, Inc. v. FERC,
`351 F.3d 1192 (D.C. Cir. 2003) .................................... 24
`
`Intel Corp. v. Qualcomm Inc.,
`___ F.4th ___, 2021 WL 6122360 (Fed. Cir. 2021) .... 22
`
`Lujan v. Defs. of Wildlife,
`504 U.S. 555 (1992) ............................................ 15, 17, 22
`
`MedImmune, Inc. v. Genentech, Inc.,
`549 U.S. 118 (2007) ............................................... passim
`
`ModernaTx, Inc. v. Arbutus Biopharma Corp.,
`18 F.4th 1352 (Fed. Cir. 2021) ............................ 2, 18, 19
`
`Oil States Energy Servs., LLC v. Greene’s Energy Grp.,
` LLC,
`138 S. Ct. 1365 (2018) ................................................... 17
`
`Samsung Elecs. Co., Ltd. v. Infobridge Pte. Ltd.,
`929 F.3d 1363 (Fed. Cir. 2019) ........................... 2, 18, 19
`
`Steel Co. v. Citizens for a Better Env’t,
`523 U.S. 83 (1998) ........................................................... 9
`
`
`
`
`
`vii
`TABLE OF AUTHORITIES—Continued
`
`
`
`
`Thryv, Inc. v. Click-To-Call Techs., LP,
`140 S. Ct. 1367 (2020) ..................................................... 3
`
`Page
`
`United States v. Arthrex, Inc.,
`141 S. Ct. 1970 (2021) ................................................... 20
`
`STATUTES
`
`28 U.S.C. § 1291 .................................................................. 24
`
`35 U.S.C. § 141(a) ............................................................... 23
`
`35 U.S.C. § 311(a) ................................................................. 3
`
`35 U.S.C. § 315 ...................................................................... 5
`
`35 U.S.C. § 315(e)(1) .......................................................... 23
`
`35 U.S.C. § 318(a) ............................................................... 23
`
`35 U.S.C. § 319 ...................................................................... 3
`
`OTHER AUTHORITIES
`
`Nicas, Apple Becomes First Company to Hit $3
`Trillion Market Value, N.Y. Times
`(Jan. 3, 2022) ............................................................ 19, 20
`
`
`
`
`
`
`
`
`IN THE
`Supreme Court of the United States
`————
`APPLE INC.,
`
`
`
`
`
`
`
`
`
`
`
`
`
`Petitioner,
`
`v.
`QUALCOMM INCORPORATED,
`
`
`
`Respondent.
`————
`On Petition for a Writ of Certiorari
`to the United States Court of Appeals
`for the Federal Circuit
`————
`BRIEF IN OPPOSITION
`————
`
`INTRODUCTION
`Apple’s petition presents no important or unsettled le-
`gal issues. Nor does Apple allege a circuit split. Its peti-
`tion involves only fact-bound questions arising from Ap-
`ple’s glaring failure to offer any evidence establishing its
`Article III standing. Apple purports to challenge two pa-
`tents’ validity, but it cannot identify a single concrete con-
`sequence that would follow from their invalidation. Apple
`offered no evidence that its royalty payments under its
`portfolio license would decrease upon the invalidation of
`either or both of the two patents. Nor did it include a dec-
`laration that it would have no need for the portfolio license
`agreement in the event of the patents’ invalidation. Nor
`even did Apple provide evidence that it will be selling
`products that could likely infringe the patents when the
`license agreement expires years down the road. In short,
`Apple made no effort whatsoever to link the patents’
`
`
`
`
`
`2
`invalidation to any cognizable consequence, much less to
`the alleviation of an actual injury.
`Apple instead purports to believe that the parties’ disa-
`greement over the abstract legal issue—that “Qualcomm
`believes its patents are valid and infringed, whereas Apple
`does not,” Pet. 17—suffices to establish standing. But
`without any concrete consequence flowing to Apple from
`the patents’ invalidation, the parties’ academic disagree-
`ment cannot support Article III standing. That is horn-
`book law needing no clarification by this Court.
`The Federal Circuit correctly analyzed and resolved
`these fact-specific standing issues below. And that court
`routinely evaluates standing under bedrock Article III
`principles and this Court’s decision in MedImmune, Inc.
`v. Genentech, Inc., 549 U.S. 118 (2007). When a plaintiff
`submits evidence establishing that it would concretely
`benefit from an invalidity finding, the Federal Circuit up-
`holds Article III standing. Indeed, a recent Federal Cir-
`cuit decision re-emphasized that a patent portfolio licensee
`can have standing to challenge an individual patent in the
`portfolio, depending on the specific facts. See Moder-
`naTx, Inc. v. Arbutus Biopharma Corp., 18 F.4th 1352,
`1362 (Fed. Cir. 2021) (describing earlier decision in Sam-
`sung Electronics Co., Ltd. v. Infobridge Pte. Ltd., 929 F.3d
`1363 (Fed. Cir. 2019), as “h[olding] that the appellant had
`standing because, even though multiple patents were li-
`censed, the appellant had provided evidence demonstrat-
`ing that the express terms of the contract structured the
`patent pool in such a way that invalidation of the patent at
`issue in the underlying IPR would have changed the
`amount of royalties”). But where a plaintiff falls short of
`that showing—as here—the Federal Circuit correctly dis-
`misses the appeal. Nothing about that mundane business
`of the federal courts warrants further review. Apple’s
`mine-run failure to demonstrate factually its standing
`
`
`
`
`
`3
`drove the outcome in this case, not any conflict with
`MedImmune or other precedents of this Court. Certio-
`rari should be denied.
`STATEMENT
`
`I. BACKGROUND
`Qualcomm is one of the world’s leading technology com-
`panies and a pioneer in the mobile phone industry.
`Through its own development and investment in technolo-
`gies, Qualcomm owns more than 100,000 patents and pa-
`tent applications. C.A. Rec. A2890.
`In 2017, Qualcomm filed suit against Apple, alleging
`Apple’s mobile devices infringed five of its patents, two of
`which are at issue in this case. See Qualcomm Inc. v. Ap-
`ple Inc., No. 17-cv-02403, ECF No. 1 (S.D. Cal. Nov. 29,
`2017) (“Qualcomm”). Apple counterclaimed, arguing that
`those five patents were invalid and that Apple did not in-
`fringe them. See id., ECF No. 51, at 36-39, 48-50.
`Apple simultaneously challenged two of the disputed
`patents as invalid through inter partes reviews (“IPRs”).
`Pet. App. 2a. IPRs are conducted by the Patent Trial and
`Appeal Board (“Board”), an Article I tribunal, and may be
`brought by any person “who is not [the] owner of the pa-
`tent.” 35 U.S.C. § 311(a). Article III standing is not re-
`quired before the Board. See Cuozzo Speed Techs., LLC
`v. Lee, 579 U.S. 262, 279 (2016) (noting that parties initiat-
`ing IPRs “need not have a concrete stake in the outcome;
`indeed, they may lack constitutional standing”). The
`Board’s decisions are appealable to the U.S. Court of Ap-
`peals for the Federal Circuit. 35 U.S.C. § 319; Thryv, Inc.
`v. Click-To-Call Techs., LP, 140 S. Ct. 1367, 1371 (2020).
`In 2019, Qualcomm and Apple entered into a settlement
`agreement of all litigation worldwide between the parties
`and dismissed all the infringement claims with prejudice.
`Pet. App. 5a-6a; Qualcomm, ECF No. 183. As part of the
`
`
`
`
`
`4
`settlement, the parties executed a license agreement that
`covered a portfolio of tens of thousands of Qualcomm pa-
`tents, including the two at issue in this case. Pet. App. 5a.
`That agreement requires Apple to pay a royalty in ex-
`change for rights to the patents covered by the agreement.
`Id. at 7a. Apple’s payments are not tied to any single pa-
`tent. Ibid. Nor do they decrease if one or more patents in
`the portfolio are declared invalid. Ibid. In exchange for
`Apple’s payment of royalties, Qualcomm agreed not to sue
`Apple for infringement of the covered patents during the
`term of the agreement. Id. at 5a. The agreement has a
`six-year term, expiring in 2025, with the option for a two-
`year renewal. Id. at 5a-6a.
`The settlement did not prohibit Apple from continuing
`to pursue its IPRs before the Board on the patents cov-
`ered by the license agreement, and Apple elected to do so
`for the two patents at issue here. C.A. Rec. A2931. The
`Board issued final written decisions in the IPRs determin-
`ing that Apple did not prove either patent was invalid. Pet.
`App. 13a-79a.
`II. PROCEEDINGS BELOW
`Apple appealed the IPR rulings to the Federal Circuit.
`Id. at 2a. The Federal Circuit dismissed the appeal be-
`cause Apple lacked Article III standing. Ibid. It rejected
`Apple’s “broad[]” reading of MedImmune, which would
`grant a licensee standing to challenge any single licensed
`patent in a portfolio, “even if the validity of any one patent
`would not affect the licensee’s payment obligations.” Id.
`at 6a. The Federal Circuit correctly recognized that in
`MedImmune the invalidation of the patent at issue would
`have affected the amount of royalty payments owed. Id.
`at 7a. Here, by contrast, Apple had neither alleged nor
`provided any evidence that the validity of the patents at
`issue would affect its royalty obligations in any way. Ibid.
`
`
`
`
`
`5
`That evidentiary defect was “fatal to establishing standing
`under the reasoning of MedImmune.” Ibid.
`The Federal Circuit also rejected Apple’s contention
`that it had standing based on the possibility that Qual-
`comm may sue Apple for infringing the patents years in
`the future after the license agreement expires. Id. at 8a.
`The court found that possibility “too speculative to confer
`standing” because Apple failed to offer any evidence that
`it would engage in conduct after expiration of the license
`agreement that could lead to an infringement suit. Id. at
`8a-9a. Indeed, the court noted that Apple had “offer[ed]
`the sparsest of declarations in support of standing, which
`are devoid of any of the specificity necessary to establish
`an injury in fact” and did not “even mention the patents at
`issue.” Id. at 9a. The generic declarations, moreover,
`were recycled from a different case, involving other pa-
`tents, to which Apple was not even a party. See C.A. Rec.
`A2929-A2932; see also Apple Inc. v. Qualcomm Inc., 17
`F.4th 1131, 1135 (Fed. Cir. 2021) (finding no standing
`where Apple submitted the “exact same declarations” it
`submitted in this case). And the court declined to take ju-
`dicial notice of “products and product features Apple may
`be selling at the expiration of the license agreement years
`from now.” Pet. App. 9a-10a.
`Lastly, Apple argued that its injury was compounded
`by the likelihood that 35 U.S.C. § 315 would estop it from
`arguing in future disputes that the patents were obvious.
`Id. at 11a. The Federal Circuit relied on its prior holdings
`to reject that argument as an independent basis for stand-
`ing. Ibid. The court also noted that any alleged harm Ap-
`ple would face from estoppel was “particularly suspect”
`because Apple had failed to offer any evidence showing
`that it was likely to be subject to an infringement suit on
`these patents in the future. Ibid.
`
`
`
`
`
`6
`Apple sought rehearing en banc, which was denied
`without recorded dissent. Id. at 81a-84a.
`REASONS FOR DENYING THE PETITION
`The Federal Circuit correctly applied MedImmune and
`this Court’s other standing precedents to resolve this fact-
`bound case. MedImmune clarified that a licensee need
`not breach its license agreement to establish standing to
`challenge a licensed patent’s validity, so long as the licen-
`see can link the patent’s invalidation to a concrete conse-
`quence for the licensee. The licensee in MedImmune
`made that showing by demonstrating that the patent’s in-
`validation would reduce its royalty payments under the li-
`cense agreement. Here, in contrast, Apple offered no evi-
`dence that either patent’s invalidation would reduce its
`royalty payments under the license agreement or other-
`wise result in any kind of cognizable consequence. The
`Federal Circuit rightly rejected Apple’s claim to standing
`on this barren evidentiary record and declined to interpret
`MedImmune as essentially eliminating the standing re-
`quirement for licensees.
`Apple’s non-MedImmune arguments likewise present
`no plausible conflict with this Court’s precedents and fail
`on the merits. Apple contends that the possibility of Qual-
`comm suing it for infringement of these patents in 2025 or
`2027 when the license agreement expires suffices to estab-
`lish its standing and that such a future infringement suit
`would be influenced by the potential estoppel effects of the
`IPR rulings below. But Apple did not even attempt to
`show that it intends to engage in potentially infringing
`conduct in those future years. Instead, Apple relies solely
`on speculation that it might manufacture products that
`might infringe these patents years down the line. This
`Court has never permitted standing based on such a con-
`jectural claim of future injury. The Federal Circuit thus
`properly rejected Apple’s non-MedImmune arguments
`
`
`
`
`
`7
`by applying traditional standing principles to the facts be-
`fore it.
`Even if there were certworthy issues lurking in the area
`of licensee standing, it is impossible to imagine a poorer
`vehicle for addressing them. Apple’s wholesale eviden-
`tiary failures make it difficult for this Court to grapple
`with any matters of jurisprudential import. Meanwhile,
`the Federal Circuit’s standing precedent continues to un-
`fold in a case-by-case manner, as that court applies Article
`III principles to the facts presented. Contrary to Apple’s
`claim, that court has not foreclosed standing by portfolio
`licensees if, unlike here, they allege an actual injury. As
`noted above, just weeks after Apple filed its petition, the
`Federal Circuit stated that it would uphold standing for a
`portfolio-licensee plaintiff who could show that the chal-
`lenged patent’s invalidity would reduce its license pay-
`ments or otherwise alter the licensee’s obligations. Ap-
`ple’s petition therefore cries “wolf,” but it manifestly does
`not call out for certiorari review.
`I. THE FEDERAL CIRCUIT CORRECTLY APPLIED MEDIM-
`MUNE AND TRADITIONAL STANDING PRINCIPLES TO
`THIS FACT-BOUND CASE
`A. MedImmune clarified how traditional standing
`principles apply in the unique licensee context
`1. In MedImmune, this Court held that a licensee
`need not breach its license agreement to establish stand-
`ing to challenge a licensed patent. 549 U.S. at 137. As long
`as the licensee can demonstrate that a declaration of the
`patent’s invalidity would relieve it of a cognizable injury
`(e.g., the payments due under the license agreement), the
`presence of the license agreement will not deprive the li-
`censee of standing. Id. at 128.
`MedImmune, which manufactured the drug Synagis,
`entered into a patent license agreement with Genentech,
`
`
`
`
`
`8
`Inc. that covered an existing patent and a then-pending
`patent application. Id. at 121. After the covered patent
`application matured into the Cabilly II patent, Genentech
`informed MedImmune that it believed Synagis was cov-
`ered by that patent and demanded royalties based on the
`drug’s sales per the terms of the license agreement. Ibid.
`MedImmune disagreed, believing that the Cabilly II pa-
`tent was invalid and that, in any event, Synagis did not in-
`fringe the patent. Id. at 122. Nevertheless, unwilling to
`risk the consequences of termination of the license agree-
`ment and potential treble damages for patent infringe-
`ment, MedImmune paid the demanded royalties under
`protest and sought a declaration in federal court that the
`Cabilly II patent was invalid and that Synagis did not in-
`fringe the patent. Id. at 122-123.
`The issue for this Court was whether MedImmune had
`Article III standing to seek a declaratory judgment that
`the patent was invalid, unenforceable, or not infringed
`even though MedImmune had not terminated or breached
`the license agreement. Id. at 120-121. The Court stated
`that the only aspect of the case casting doubt on standing
`was MedImmune’s continued payment of royalties, ex-
`plaining that “but for petitioner’s continuing to make roy-
`alty payments, nothing about the dispute would render it
`unfit for judicial resolution.” Id. at 128. The question,
`therefore, was whether the continued payment of royalties
`destroyed MedImmune’s standing to challenge patent va-
`lidity. Relying on Altvater v. Freeman, 319 U.S. 359
`(1943), which held that coerced royalty payments made
`under an injunction order did not deprive a licensee of
`standing to challenge the patent’s validity, this Court held
`that Article III did not require MedImmune to break or
`terminate the license agreement before seeking a declar-
`atory judgment that the Cabilly II patent was invalid.
`MedImmune, 549 U.S. at 131, 137.
`
`
`
`
`
`9
`The link between the patent’s validity and a cognizable
`injury was clear in MedImmune because invalidation of
`the patent at issue would eliminate the need to make pay-
`ments under the license agreement. MedImmune con-
`tended, and the Court agreed, that a determination that
`the patent was invalid would relieve MedImmune of spe-
`cific royalty obligations:
`There is no dispute that [Article III’s case-or-
`controversy requirement] would have been
`satisfied if petitioner had taken the final step of
`refusing to make royalty payments under the
`1997 license agreement. Respondents claim a
`right to royalties under the licensing agree-
`ment. Petitioner asserts that no royalties are
`owing because the Cabilly II patent is invalid
`and not infringed; and alleges (without contra-
`diction) a threat by respondents to enjoin sales
`if royalties are not forthcoming.
`Id. at 128. The patent’s continuing validity was thus di-
`rectly injuring the licensee through the required payment
`of royalties (or the near-certainty of an infringement ac-
`tion if it repudiated the agreement).
`In sum, the Court grounded its holding in MedImmune
`on the close link between the relief sought and a cogniza-
`ble injury that is the hallmark of Article III standing. See
`Steel Co. v. Citizens for a Better Env’t, 523 U.S. 83, 107
`(1998) (“Relief that does not remedy the injury suffered
`cannot bootstrap a plaintiff into federal court; that is the
`very essence of the redressability requirement.”). Specif-
`ically, there was a direct link between the payments due
`under the license agreement and a finding of invalidity be-
`cause invalidation of the patent would extinguish the licen-
`see’s payment obligations. In other words, the licensee’s
`successful invalidation of the patent would have a con-
`crete, cognizable effect on the licensee. That was
`
`
`
`
`
`10
`sufficient to establish the licensee’s standing to challenge
`the patent’s validity.
`2. Apple makes much of this Court’s statement in
`dicta that it “probably ma[de] no difference” whether the
`dispute involved a “freestanding claim of patent invalid-
`ity” or “a claim that, both because of patent invalidity and
`because of noninfringement, no royalties are owing under
`the license agreement.” MedImmune, 549 U.S. at 123.
`That statement does not change the fact that the Court’s
`holding relied on the license agreement and its conse-
`quences. Id. at 123-124. Indeed, the Court directly ad-
`dressed whether there was a contract dispute and deter-
`mined that there was. See id. at 125 (“All we need deter-
`mine is whether petitioner has alleged a contractual dis-
`pute. It has done so.”). It also rejected the dissent’s con-
`tention “that the validity of the contract claim hinges en-
`tirely upon a determination of the patent’s validity,” rec-
`ognizing instead that a finding of noninfringement would
`lead to the same result (i.e., no royalties owed under the
`license agreement), regardless of the Cabilly II patent’s
`validity. Id. at 125 n.6 (internal quotation marks omitted).
`Thus, there can be no doubt that the Court’s jurisdictional
`ruling was grounded in its determination that MedIm-
`mune “ha[d] raised and preserved a contract claim.” Id.
`at 125.
`In any event, whether the claim in MedImmune is char-
`acterized as a patent-validity claim or a contract claim is
`an irrelevant digression. The key point is that MedIm-
`mune involved a concrete injury linked to the patent’s va-
`lidity—the requirement to pay royalties—that is lacking
`here. Invalidation of the patent would have eliminated
`that injury there; the same cannot be said here.
`
`
`
`
`
`11
`B. The Federal Circuit’s opinion is faithful to
`MedImmune
`1. The link between the relief sought and a cognizable
`injury that was so central to MedImmune’s holding is
`missing in this case. Whereas in MedImmune the patent’s
`invalidation would eliminate the licensee’s royalty obliga-
`tions, here Apple offered no evidence that invalidation of
`either patent would have any concrete effect whatsoever
`on its rights or obligations under the license agreement.
`Nor did Apple attempt to tie the patent’s invalidation to
`any other cognizable consequences apart from its rights
`and obligations under the license agreement. Thus, it is
`no overstatement to say that on this evidentiary record,
`Apple has nothing at stake other than an academic inter-
`est in the patents’ validity.
`Apple’s generic allegations of coercion, see Pet. 18, do
`not support standing. The supposed coercion—making
`payments to avoid an infringement suit related to the two
`challenged patents—is not linked by evidence to those pa-
`tents. Apple never claimed that its royalty payments
`would decrease if the court invalidated these two patents.
`In other words, on this record, Apple’s payments will en-
`dure even if the two patents at issue are invalidated. That
`differs sharply from the coercion theory in MedImmune,
`in which MedImmune’s royalty payments on sales of its
`new drug would have been eliminated if the patent were
`held invalid. See 549 U.S. at 121-122.
`Recognizing these flaws in Apple’s arguments, the Fed-
`eral Circuit properly held that Apple’s failure to demon-
`strate that the invalidation of the challenged patents
`would affect its ongoing payment obligations was fatal to
`establishing standing under MedImmune:
`Apple nowhere argues or provides evidence
`that the validity of any single patent, including
`the ’037 patent or ’362 patent, would affect its
`
`
`
`
`12
`ongoing payment obligations. Nor does Apple
`identify any contractual dispute involving its
`(e.g.,
`ongoing
`royalty
`obligations
`a
`disagreement over whether certain Apple
`product sales
`trigger additional royalty
`payments) that relates to, or could be resolved
`through a validity determination of, the
`patents at issue. Because the validity of the
`challenged patents would not impact Apple’s
`ongoing payment obligations, the reasoning of
`MedImmune does not apply.
`Pet. App. 7a-8a. That holding is both unremarkable and
`unmistakably correct. As the Federal Circuit recognized,
`Apple’s failure to provide evidence is especially relevant
`here where Qualcomm’s previous infringement claims for
`the same patents were dismissed with prejudice. Id. at
`10a; see Grit Energy Sols., LLC v. Oren Techs., LLC, 957
`F.3d 1309, 1320 (Fed. Cir. 2020) (finding standing because
`previous claims were dismissed without prejudice).
`2. Apple could have avoided its standing problem if it
`offered evidence demonstrating that invalidation of the
`patents would remedy an injury. But it made not the
`slightest effort in that regard. The Federal Circuit did not
`engage in hyperbole when it described Apple’s evidence as
`“the sparsest of declarations in support of standing, which
`are devoid of any of the specificity necessary to establish
`an injury in fact.” Pet. App. 9a.
`Apple offered recycled, generic declarations that do not
`even mention the two patents at issue. See C.A. Rec.
`A2929-A2932.1 Instead, the declarations merely assert
`
`
`1 Apple has used these same cursory declarations in numerous appeals
`involving different patents. See, e.g., Exhibit 4 to Apple’s Motion for
`Leave to Intervene, Intel. Corp. v. Qualcomm Inc., Nos. 20-1828, 20-
`1867, ECF No. 28 (Fed. Cir. June 29, 2020).
`
`
`
`
`13
`that Apple and Qualcomm entered into a settlement that
`included a license agreement with ongoing payment obli-
`gations and permitted Apple to continue certain IPRs. Id.
`at A2930-A2931. The declarations also note that in the set-
`tlement negotiations Qualcomm rejected Apple’s proposal
`of a permanent, irrevocable license. Ibid. That is it. Noth-
`ing else is asserted. That is the entire evidentiary founda-
`tion on which Apple rests its argument.
`Chronicling the deficiencies of Apple’s declarations,
`they provide no evidence:
`(1) that the patents’ invalidation would alter Apple’s
`payment obligations under the license agreement,
`(2) of a contractual dispute that would be affected by
`the validity of the patents,
`(3) that Apple would no longer need its portfolio license
`agreement if these two patents are invalidated, or
`(4) that the patents’ invalidation would have any other
`cognizable consequence for Apple.
`Pet. App. 7a-8a. In short, the declarations do not even at-
`tempt to link the invalidation of the two patents at issue to
`a reduction in royalties owed or any other consequence for
`Apple. If another party in another case offers any such
`evidence—through proper declarations or otherwise—
`then the result of that case may well be different from this
`one.
`3. Apple’s fundamental evidentiary failing makes this
`an easy case under MedImmune. If the patent in MedIm-
`mune were to be invalidated, everything would have
`changed for the licensee. The licensee would cease making
`royalty payments on the sales of its new drug because the
`license agreement would no longer apply. MedImmune,
`549 U.S. at 128. Based on the record in this case, if the
`patents at issue were to be invalidated, nothing would
`change for Apple. Apple would be obligated to continue
`
`
`
`
`
`14
`making precisely the same payments under the portfolio-
`license agreement that it is making now. In other words,
`regardless of whether Apple wins or loses, it will pay the
`same fee to have access to the same patented technology
`under the same license. That evidentiary reality drove the
`outcome here, not some consequential dispute over how to
`interpret or apply MedImmune.
`The decision below reflects a fact-bound application of
`MedImmune and traditional standing principles to a
`strikingly deficient evidentiary record. There is nothing
`remotely certworthy about its reasoning and result.
`II. APPLE MISUNDERSTANDS MEDIMMUNE AND EXAG-
`GERATES THE CONSEQUENCES OF THE DECISION BE-
`LOW
`A. Neither MedImmune nor other precedents sup-
`port an exception to Article III standing princi-
`ples for patent licensees
`1. Apple erroneously asserts that MedImmune cre-
`ates a rule that allows licensees to establish Article III
`standing merely by pointing to a legal dispute about the
`validity of one patent covered by a license—regardless of
`whether the resolution of that dispute would concretely af-
`fect the licensee’s obligations. Apple’s Question Presented
`starkly frames its sweeping proposition: “Whether a licen-
`see has Article III standing to challenge the validity of a
`patent covered by a license agreement that covers multi-
`ple patents.” Pet. i. Apple believes that MedImmune
`mandates a “yes” answer to that question without the need
`for any evidence to link the patent’s invalidation to re-
`duced royalty payments or some other concrete conse-
`quence for the licensee. Such an outcome would effec-
`tively exempt patent licensees from standard Article III
`principles.
`
`
`
`
`
`15
`In line with this rewrite of standing law, Apple identi-
`fies the parties’ “concrete controversy” as their disagree-
`ment over the validity of the patents—and nothing more:
`“Much like the parties in MedImmune, Apple and Qual-
`comm have a concrete controversy—Qualcomm believes
`its paten
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