No. 21-746
`In the Supreme Court of the United States
`
`
`
`APPLE INC., PETITIONER
`
`v.
`
`QUALCOMM INCORPORATED
`
`
`
`ON PETITION FOR A WRIT OF CERTIORARI
`TO THE UNITED STATES COURT OF APPEALS
`FOR THE FEDERAL CIRCUIT
`
`
`
`BRIEF FOR THE UNITED STATES AS AMICUS CURIAE
`
`
`
` ELIZABETH B. PRELOGAR
`Solicitor General
`Counsel of Record
`MALCOLM L. STEWART
`Deputy Solicitor General
`MICHAEL D. GRANSTON
`Deputy Assistant Attorney
`General
`BENJAMIN W. SNYDER
`Assistant to the Solicitor
`General
`DANIEL TENNY
`CYNTHIA A. BARMORE
`Attorneys
`Department of Justice
`Washington, D.C. 20530-0001
`SupremeCtBriefs@usdoj.gov
`(202) 514-2217
`
`.
`
`
`
`
`

`

`QUESTION PRESENTED
`
`Whether petitioner established Article III standing
`to pursue a judicial challenge to the validity of two pa-
`tents covered by its license agreement with respondent,
`where petitioner presented no evidence that, if it pre-
`vailed in its challenge, it was likely to terminate the li-
`cense agreement, pay less in licensing fees, or manufac-
`ture otherwise-infringing products.
`
`(I)
`
`

`

`TABLE OF CONTENTS
`
`Page
`
`Interest of the United States....................................................... 1
`Statement ...................................................................................... 1
`Discussion ...................................................................................... 8
`A. Petitioner has not shown that respondent’s patents
`are causing it an injury that would be redressed by
`a favorable decision in this case ....................................... 9
`B. MedImmune does not support petitioner’s broad,
`per se approach to licensee standing............................. 12
`Conclusion ................................................................................... 22
`
`TABLE OF AUTHORITIES
`
`Cases:
`
`
`
`AVX Corp. v. Presidio Components, Inc.,
`923 F.3d 1357 (Fed. Cir. 2019) ........................................... 21
`Adarand Constructors, Inc. v. Mineta,
`534 U.S. 103 (2001).............................................................. 21
`Arizonans for Official English v. Arizona,
`520 U.S. 43 (1997) ................................................................. 3
`Carney v. Adams, 141 S. Ct. 493 (2020) .............................. 17
`City of Los Angeles v. Lyons, 461 U.S. 95 (1983) ............... 11
`Consumer Watchdog v. Wisconsin Alumni Research
`Foundation, 753 F.3d 1258 (Fed. Cir. 2014),
`cert. denied, 574 U.S. 1153 (2015) ................................... 4, 9
`Cuozzo Speed Technologies, LLC v. Lee,
`579 U.S. 261 (2016).................................................. 1, 2, 9, 12
`DaimlerChrysler Corp. v. Cuno,
`547 U.S. 332 (2006).............................................................. 21
`Hollingsworth v. Perry, 570 U.S. 693 (2013) ...................... 10
`Lujan v. Defenders of Wildlife,
`504 U.S. 555 (1992)............................................................ 4, 9
`
`
`
`(III)
`
`

`

`IV
`
`Cases—Continued:
`
`Page
`
`MedImmune, Inc. v. Genentech, Inc.,
`549 U.S. 118 (2007)..................................................... passim
`Oil States Energy Services, LLC v. Greene’s Energy
`Group, LLC, 138 S. Ct. 1365 (2018) .................................... 2
`Samsung Electronics Co. v. Infobridge Pte. Ltd.,
`929 F.3d 1363 (Fed. Cir. 2019) ........................................... 19
`Steffel v. Thompson, 415 U.S. 452 (1974) ................ 14, 16, 17
`Terrace v. Thompson, 263 U.S. 197 (1923) .................... 14, 16
`TransUnion LLC v. Ramirez,
`141 S. Ct. 2190 (2021) ......................................................... 12
`Village of Arlington Heights v. Metropolitan
`Housing Development Corp., 429 U.S. 252 (1977) .... 18, 20
`
`Constitution and statutes:
`U.S. Const. Art. III ...................................................... passim
`§ 2 ....................................................................................... 9
`Leahy-Smith America Invents Act,
`Pub. L. No. 112-29, 125 Stat. 284 ........................................ 2
`Patent Act of 1952, 35 U.S.C. 1 et seq.:
`35 U.S.C. 101 ...................................................................... 2
`35 U.S.C. 102 ...................................................................... 2
`35 U.S.C. 103 ...................................................................... 2
`35 U.S.C. 131 ...................................................................... 2
`35 U.S.C. 141(c) ................................................................. 3
`35 U.S.C. 154(a)(1) ............................................................. 1
`35 U.S.C. 311-319............................................................... 2
`35 U.S.C. 311(a)-(b) ........................................................... 2
`35 U.S.C. 311(b) ................................................................. 2
`35 U.S.C. 314(a) ................................................................. 3
`35 U.S.C. 315(e) ............................................................... 21
`35 U.S.C. 315(e)(1) ............................................................. 4
`
`
`
`

`

`Statutes—Continued:
`Statutes—Continued:
`
`V
`
`Page
`Page
`
`
`
`35 U.S.C. 315(€)(2).....cessesscsssssssssssecssesnssseeseesesssssensnseeateers 4
`35 U.S.C. 315(e)(2) ............................................................. 4
`35 U.S.C. 316(a)(5).....ceeecccsscssssssescssesnsssecseesneesassensnseeasees 3
`35 U.S.C. 316(a)(5) ............................................................. 3
`35 U.S.C. 316(a)(8)......ceseccccecssesssescseesnsssecssesnesssssensnseeateers 3
`35 U.S.C. 316(a)(8) ............................................................. 3
`35 U.S.C. 316(a)(10)........eecccsseesscsecssesrsssesseeseesssssensneeeaseers 3
`35 U.S.C. 316(a)(10) ........................................................... 3
`35 U.S.C. 316(a)(18)......ceccccccssesssssecssesnsssesseeseeessesensnseeaseers 3
`35 U.S.C. 316(a)(13) ........................................................... 3
`35 U.S.C. 316(C) «0... sscccessssscsscsssensesecssenssseeseesneesessenseeesaseers 3
`35 U.S.C. 316(c) ................................................................. 3
`35 U.S.C. 81G(€) «2... ccccessesscsscsseersesecseensssecseesneessesensnsesaseers 3
`35 U.S.C. 316(e) ................................................................. 3
`35 U.S.C. 318(a) «2.scccessesscsscsssensesecseesnsssecseesneesassansnseeateens 3
`35 U.S.C. 318(a) ................................................................. 3
`BB U.S.C. 819... ceescccscsseeesesecssesnsesecsesseeesassersesesseeanseseees 3,4
`35 U.S.C. 319 .................................................................. 3, 4
`B5 U.S.C. 821(C) «2. esccssssesscscssesnsesecseesnsssecsessteesassansnseeateas 2
`35 U.S.C. 321(c) ................................................................. 2
`
`
`
`
`
`
`
`
`
`
`
`

`

`In the Supreme Court of the United States
`
`
`
`No. 21-746
`
`APPLE INC., PETITIONER
`v.
`
`QUALCOMM INCORPORATED
`
`
`
`ON PETITION FOR A WRIT OF CERTIORARI
`TO THE UNITED STATES COURT OF APPEALS
`FOR THE FEDERAL CIRCUIT
`
`
`
`BRIEF FOR THE UNITED STATES AS AMICUS CURIAE
`
`
`
`INTEREST OF THE UNITED STATES
`This brief is filed in response to the Court’s order in-
`viting the Solicitor General to express the views of the
`United States. In the view of the United States, the pe-
`tition for a writ of certiorari should be denied.
`
`STATEMENT
`1. A United States patent confers “the right to ex-
`clude others from making, using, offering for sale, or
`selling [an] invention throughout the United States or
`importing the invention into the United States.” 35
`U.S.C. 154(a)(1). An inventor who seeks a patent must
`file an application with the United States Patent and
`Trademark Office (USPTO). When such an application
`is filed, a USPTO examiner “reviews [the] applicant’s
`patent claims, considers the prior art, and determines
`whether each claim meets the applicable patent law re-
`quirements.” Cuozzo Speed Technologies, LLC v. Lee,
`
`(1)
`
`

`

`2
`
`579 U.S. 261, 266 (2016); see 35 U.S.C. 131. Those re-
`quirements include eligibility and utility, 35 U.S.C. 101;
`novelty, 35 U.S.C. 102; and non-obviousness over the
`prior art, 35 U.S.C. 103. If the examiner determines
`that the applicant satisfies the statutory requirements,
`the USPTO issues a patent for the invention. 35 U.S.C.
`131; see Cuozzo, 579 U.S. at 266-267.
`“For several decades,” Congress has authorized the
`USPTO to reconsider its own patent-issuance decisions
`through proceedings “to reexamine—and perhaps
`cancel—a patent claim that it had previously allowed.”
`Cuozzo, 579 U.S. at 267. In 2011, the Leahy-Smith
`America Invents Act (AIA), Pub. L. No. 112-29, 125
`Stat. 284, created new procedures for such challenges.
`The AIA established a mechanism known as post-grant
`review for challenges that are brought within nine
`months after the disputed patent was issued. 35 U.S.C.
`321(c). For challenges brought more than nine months
`after issuance of the patent, the AIA created inter
`partes review. 35 U.S.C. 311-319.
`Any person other than the patent owner may file a
`petition for inter partes review to assert that, at the
`time the patent was issued, the claimed invention was
`anticipated or obvious in light of “prior art consisting of
`patents or printed publications.” 35 U.S.C. 311(b); see
`311(a)-(b). Because inter partes review is an adminis-
`trative proceeding, a petitioner need not satisfy Article
`III requirements in order to request institution of a re-
`view. See Cuozzo, 579 U.S. at 279 (“Parties that initiate
`the proceeding need not have a concrete stake in the
`outcome; indeed, they may lack constitutional stand-
`ing.”); cf. Oil States Energy Services, LLC v. Greene’s
`Energy Group, LLC, 138 S. Ct. 1365, 1373 (2018) (hold-
`ing that the USPTO can undertake “reconsideration of
`
`
`
`

`

`3
`
`th[e] grant” of “a public franchise * * * without violat-
`ing Article III”).
`The USPTO may institute an inter partes review
`only if the agency finds “a reasonable likelihood that the
`petitioner would prevail” with respect to at least one of
`the challenged patent claims. 35 U.S.C. 314(a). When
`the USPTO elects to institute an inter partes review,
`the agency’s Patent Trial and Appeal Board (Board)
`conducts the proceeding. See 35 U.S.C. 316(c). Both
`the petitioner for inter partes review and the patent
`owner are entitled to take limited discovery, 35 U.S.C.
`316(a)(5); to request an oral hearing, 35 U.S.C.
`316(a)(10); and to file written memoranda, 35 U.S.C.
`316(a)(8) and (13). The petitioner for inter partes re-
`view bears “the burden of proving a proposition of un-
`patentability by a preponderance of the evidence.” 35
`U.S.C. 316(e). At the conclusion of the proceeding (un-
`less the matter has been dismissed), the Board must “is-
`sue a final written decision with respect to the patenta-
`bility of any patent claim challenged by the petitioner
`and any new claim added” to the patent by amendment
`during the pendency of the inter partes review proceed-
`ing. 35 U.S.C. 318(a).
`Under the AIA, “[a] party dissatisfied with” the
`Board’s final written decision in an inter partes review
`“may appeal the decision pursuant to [35 U.S.C.] 141
`through 144.” 35 U.S.C. 319. As relevant here, a party
`to an inter partes review “who is dissatisfied with” the
`Board’s final written decision “may appeal the Board’s
`decision only to the United States Court of Appeals for
`the Federal Circuit.” 35 U.S.C. 141(c). Because the
`prerequisites for Article III standing “must be met by
`persons seeking appellate review” in federal court, Ar-
`izonans for Official English v. Arizona, 520 U.S. 43, 64
`
`
`
`

`

`4
`
`(1997), a party seeking Federal Circuit review of the
`Board’s decision must show injury in fact, causation,
`and redressability. See Consumer Watchdog v. Wiscon-
`sin Alumni Research Foundation, 753 F.3d 1258, 1260-
`1261 (Fed. Cir. 2014), cert. denied, 574 U.S. 1153 (2015);
`cf. Lujan v. Defenders of Wildlife, 504 U.S. 555, 560-561
`(1992). Once a party with Article III standing has initi-
`ated an appeal, “[a]ny party to the inter partes review
`shall have the right to be a party to the appeal.” 35
`U.S.C. 319.
`If the USPTO institutes an inter partes review of a
`patent claim and issues a final written decision, the in-
`ter partes review petitioner thereafter is estopped from
`“request[ing] or maintain[ing] a proceeding” before the
`agency “with respect to that claim on any ground that
`the petitioner raised or reasonably could have raised
`during that inter partes review.” 35 U.S.C. 315(e)(1).
`The petitioner likewise is barred from “assert[ing] ei-
`ther in a civil action arising in whole or in part under [28
`U.S.C.] 1338,” or in proceedings before the Interna-
`tional Trade Commission, “that the [patent] claim is in-
`valid on any ground that the petitioner raised or reason-
`ably could have raised during that inter partes review.”
`35 U.S.C. 315(e)(2).
`2. Petitioner manufactures iPhones and other con-
`sumer technology products. See Pet. App. 2a, 9a. In
`2017, respondent sued petitioner in the United States
`District Court for the Southern District of California,
`alleging (as relevant here) that several of petitioner’s
`products violated U.S. Patent No. 7,844,037 (’037
`patent) and U.S. Patent No. 8,683,362 (’362 patent),
`both held by respondent. Qualcomm Inc. v. Apple Inc.,
`No. 17-cv-2403, D. Ct. Doc. 1 (S.D. Cal. Nov. 29, 2017).
`Those patents concern a technique that enables cellular
`
`
`
`

`

`5
`
`telephone users to respond to calls with text messages
`(the ’037 patent) and a system that facilitates the use of
`multiple applications on a small screen (the ’362 patent).
`See Pet. App. 15a-16a, 56a-57a.
`Petitioner denied that its products infringed the as-
`serted patents and filed counterclaims alleging that the
`patents were invalid. See Qualcomm Inc. v. Apple Inc.,
`No. 17-cv-2403, D. Ct. Doc. 51, at 2-3, 39, 50 (S.D. Cal.
`Jan. 22, 2018). Petitioner also filed petitions for inter
`partes review challenging the ’037 and ’362 patents.
`Pet. App. 2a. The district court stayed the proceedings
`in respondent’s infringement suit pending resolution of
`the inter partes reviews. Qualcomm Inc. v. Apple Inc.,
`No. 17-cv-2403, D. Ct. Doc. 177 (S.D. Cal. Aug. 29, 2018).
`In 2019, petitioner and respondent entered into a
`global settlement agreement that resolved all then-
`pending litigation between them worldwide, including
`respondent’s infringement suit in the Southern District
`of California. Pet. App. 5a-6a; 20-1561 C.A. App. 2910;
`see Qualcomm Inc. v. Apple Inc., No. 17-cv-2403, D. Ct.
`Doc. 184 (S.D. Cal. Apr. 23, 2019). As part of that set-
`tlement, the parties executed a license agreement that
`covers tens of thousands of patents, including the ’037
`and ’362 patents. See Pet. App. 5a-7a. The license
`agreement provides that, in exchange for specified, on-
`going royalty payments from petitioner, respondent
`will not sue petitioner for infringement of any of the
`covered patents while the agreement remains in effect.
`Ibid. The license agreement will expire in 2025 (or 2027,
`if extended), before the expiration dates of the ’037 and
`’362 patents. Id. at 6a.
`The parties agreed that their settlement would not
`require petitioner to withdraw from the pending inter
`partes review proceedings concerning the ’037 and ’362
`
`
`
`

`

`6
`
`patents. 20-1561 C.A. App. 2911. But petitioner ap-
`pears to concede—and has not introduced evidence to
`dispute—that its payment obligations under the license
`agreement will remain the same if the ’037 and ’362 pa-
`tents are declared invalid. See Pet. App. 7a; Pet. 19.
`3. In 2020, the Board issued final written decisions
`in favor of respondent in the inter partes review pro-
`ceedings, upholding the validity of the two patents at
`issue. Pet. App. 13a-52a (’362 patent); id. at 53a-79a
`(’037 patent).
`Petitioner sought review of the Board’s decisions in
`the Federal Circuit. In its opening briefs, petitioner did
`not mention its license agreement with respondent or
`otherwise discuss what ongoing interest it had in inval-
`idating the ’037 and ’362 patents. See 20-1561 Pet. C.A.
`Br. 2; 20-1642 Pet. C.A. Br. 1. After respondent
`disputed petitioner’s Article III standing in its response
`briefs, however, petitioner filed two short declarations
`describing the license agreement in general terms and
`argued in its reply briefs that the license agreement—
`as well as the possibility of future infringement suits af-
`ter the license agreement expires—gave petitioner a
`concrete interest in its appeals from the Board’s deci-
`sions. See 20-1561 Pet. C.A. Reply Br. 23-28; 20-1561
`C.A. App. 2909-2911; 20-1642 Pet. C.A. Reply Br. 23-28;
`20-1642 C.A. App. 2929-2932.
`The court of appeals dismissed petitioner’s appeals
`for lack of standing. Pet. App. 1a-11a. The court held
`that, as a result of petitioner’s license agreement with
`respondent, petitioner suffers no non-speculative
`injury-in-fact from the continued effectiveness of the
`’037 and ’362 patents, and that decisions invalidating
`those patents therefore would not redress any Article
`III injury. Id. at 7a. The court explained that petitioner
`
`
`
`

`

`7
`
`had “nowhere argue[d] or provide[d] evidence that the
`validity of any single patent, including the ’037 patent
`or the ’362 patent, would affect its ongoing payment ob-
`ligations” during the period while the license agreement
`remains in effect. Ibid. The court further explained
`that petitioner had “provide[d] no evidence that it in-
`tends to engage in any activity that may give rise to an
`infringement suit of the ’037 patent or the ’362 patent
`when the license expires.” Id. at 8a. The court found as
`well that “[w]hat products and product features [peti-
`tioner] may be selling at the expiration of the license
`agreement years from now are not the kind of undis-
`puted facts we may take judicial notice of because they
`may be reasonably questioned.” Id. at 9a-10a. The
`court concluded that it therefore could only “speculate
`about what activity [petitioner] may engage in after the
`expiration of the license agreement that would give rise
`to a potential suit from” respondent. Id. at 9a.
`Petitioner argued it had standing to appeal under
`this Court’s decision in MedImmune, Inc. v. Genentech,
`Inc., 549 U.S. 118 (2007). In MedImmune, this Court
`held that a pharmaceutical manufacturer could pursue
`a declaratory-judgment action to challenge the validity
`of a patent that arguably covered one of its products,
`even though the manufacturer was paying licensing fees
`for the patent “under protest” in order to avoid an in-
`fringement suit. Id. at 122 (citation omitted); see id. at
`137. It was clear that, if the patent was declared invalid,
`the licensee would no longer be required to pay royal-
`ties on the allegedly infringing product. See id. at 121,
`124.
`The court of appeals in this case found MedImmune
`inapposite. The court observed that MedImmune had
`“sought a declaratory judgment that it did not owe any
`
`
`
`

`

`8
`
`royalties because the sale of its product did not infringe
`any valid claim of the [challenged] patent.” Pet. App.
`7a. The court explained that “[h]ere, in contrast, [peti-
`tioner] has not alleged that the validity of the patents at
`issue will affect its contract rights (i.e., its ongoing roy-
`alty obligations).” Ibid. The court found that difference
`“fatal to establishing standing under the reasoning of
`MedImmune.” Ibid.; see id. at 8a (“Because the valid-
`ity of the challenged patents would not impact [peti-
`tioner’s] ongoing payment obligations, the reasoning of
`MedImmune does not apply.”).
`The court of appeals denied petitions for rehearing
`without noted dissent. Pet. App. 81a-82a; id. at 83a-84a.
`
`DISCUSSION
`The court of appeals correctly held that petitioner
`had not established Article III standing to challenge the
`two patents at issue here. That case-specific determi-
`nation reflected the particular terms of the license
`agreement between the parties, under which a judicial
`determination that the ’037 and ’362 patents are invalid
`would have no effect on petitioner’s licensing payments.
`Petitioner also presented no evidence indicating either
`that it would withdraw from the license agreement if it
`obtained a judgment that those two patents are invalid,
`or that it is likely to manufacture potentially infringing
`products after the agreement expires.
`Rather than identify case-specific evidence of con-
`crete harm, petitioner advocates a per se rule that a li-
`censee with ongoing royalty payment obligations has
`standing to challenge every patent it has licensed, so
`long as it would be subject to an infringement suit if it
`repudiated the agreement. The court of appeals appro-
`priately rejected such a rule, which is inconsistent with
`established standing principles and finds no support in
`
`
`
`

`

`9
`
`this Court’s decision in MedImmune, Inc. v. Genentech,
`Inc., 549 U.S. 118 (2007). Further review is not war-
`ranted.
`
`A. Petitioner Has Not Shown That Respondent’s Patents
`Are Causing It An Injury That Would Be Redressed By
`A Favorable Decision In This Case
`The “[J]udicial Power” of the United States is lim-
`ited to Article III “Cases” and “Controversies.” U.S.
`Const. Art. III, § 2. Article III standing principles are
`an “essential and unchanging part of the case-or-
`controversy requirement.” Lujan v. Defenders of Wild-
`life, 504 U.S. 555, 560 (1992). A party seeking to invoke
`a federal court’s jurisdiction must establish the “three
`elements” of Article III standing: (1) a “concrete and
`particularized” “injury in fact” that is (2) caused by the
`challenged conduct and (3) redressable by a favorable
`decision. Id. at 560; see id. at 560-561.
`Because the Board is not an Article III court, peti-
`tioner was not required to satisfy those requirements
`when it sought institution of, and then participated in,
`the inter partes review proceedings at issue here. See
`Cuozzo Speed Technologies, LLC v. Lee, 579 U.S. 261,
`267 (2016). In order to obtain Federal Circuit review,
`however, petitioner was required to show that the
`Board’s decisions upholding the ’037 and ’362 patents
`were causing it a concrete and particularized injury that
`would be redressed by a favorable judicial ruling. See
`Consumer Watchdog v. Wisconsin Alumni Research
`Foundation, 753 F.3d 1258, 1261 (Fed. Cir. 2014) (ex-
`plaining, in an appeal from a Board decision, that “alt-
`hough Article III standing is not necessarily a require-
`ment to appear before an administrative agency, once a
`party seeks review in a federal court, the constitutional
`requirement that it have standing kicks in”) (citation
`
`
`
`

`

`10
`
`and internal quotation marks omitted), cert. denied, 574
`U.S. 1153 (2015); see also, e.g., Hollingsworth v. Perry,
`570 U.S. 693, 705 (2013) (recognizing that a “person[]
`seeking appellate review” in an Article III court must
`establish standing in order to pursue the appeal) (cita-
`tion omitted). Petitioner did not make that necessary
`showing.
`With respect to the first two elements of Article III
`standing, petitioner has not shown that the Board’s de-
`cisions leaving the ’037 and ’362 patents in effect are
`causing it any concrete and particularized injury. First,
`petitioner has never suggested that, but for the ’037 and
`’362 patents, it would not have signed (or would now re-
`pudiate) its license agreement with respondent, which
`enables petitioner to practice tens of thousands of addi-
`tional patents that are not implicated in this suit. Cf.
`Pet. Reply Br. 2-3 (appearing to acknowledge that peti-
`tioner would still need the license agreement even if the
`’037 and ’362 patents were declared invalid). There is
`accordingly no evidence that respondent’s ownership of
`the ’037 and ’362 patents is coercing petitioner to main-
`tain a license agreement that it would otherwise decline.
`Second, under the terms of the license agreement,
`petitioner’s payment obligations would not change if the
`’037 and ’362 patents were invalidated. Pet. App. 7a-8a.
`Those patents accordingly are not causing petitioner to
`pay more in licensing fees than it otherwise would. Ibid.
`Third, there is likewise no evidence that the ’037 and
`’362 patents are constraining petitioner’s manufactur-
`ing or sales choices. As a result of the license, petitioner
`is currently free to manufacture and sell its devices
`without fear that respondent will sue it for infringement
`of the ’037 or ’362 patent.
`
`
`
`

`

`11
`
`Petitioner could eventually be subject to infringe-
`ment liability if it manufactures or sells products that
`practice the ’037 or ’362 patent during the window of
`time after the expiration of the current licensing agree-
`ment and before the expiration of those patents. In its
`Federal Circuit appeals, however, petitioner submitted
`no evidence that it is likely to engage in such conduct
`during that period. See Pet. App. 8a-11a. Petitioner
`instead suggested that the court of appeals should take
`judicial notice of that possibility—a suggestion that the
`court appropriately rejected, see id. at 8a-10a, and that
`petitioner has not renewed in this Court. On the evi-
`dentiary record that petitioner created in the court of
`appeals, the court therefore could only “speculate about
`what activity [petitioner] may engage in after the expi-
`ration of the license agreement that would give rise to a
`potential suit” for infringement of the ’037 and ’362 pa-
`tents. Id. at 9a. The mere possibility of future injury is
`not sufficient to establish Article III standing. See, e.g.,
`City of Los Angeles v. Lyons, 461 U.S. 95, 109 (1983)
`(finding no Article III standing in light of “the specula-
`tive nature of [the plaintiff ’s] claim that he will again
`experience injury as the result of ” the challenged prac-
`tice).
`For essentially the same reasons, petitioner has not
`shown that a favorable decision in this case would re-
`dress any injury to it—or, indeed, would have any real-
`world effect on petitioner at all. Petitioner has not sug-
`gested that it would terminate its license agreement
`with respondent, or that it would pay respondent less in
`licensing fees, if it prevailed in its challenge to the ’037
`and ’362 patents. It has provided no evidence that, if it
`prevailed, it would subsequently manufacture and sell
`products that it otherwise would not have manufactured
`
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`

`12
`
`and sold. And while “inter partes review helps protect
`the public’s paramount interest in seeing that patent
`monopolies are kept within their legitimate scope,”
`Cuozzo, 579 U.S. at 279-280 (citation, ellipsis, and inter-
`nal quotation marks omitted), that sort of abstract,
`widely shared interest cannot establish a case or con-
`troversy suitable for resolution by Article III courts.
`See TransUnion LLC v. Ramirez, 141 S. Ct. 2190, 2203
`(2021).
`
`B. MedImmune Does Not Support Petitioner’s Broad, Per
`Se Approach To Licensee Standing
`Petitioner makes no serious effort to establish stand-
`ing under the traditional three-part inquiry described
`above. Instead, relying on MedImmune, supra, peti-
`tioner urges (Pet. 15-18) this Court to adopt a special
`per se rule of standing limited to suits or appeals
`brought by patent licensees. Under petitioner’s pro-
`posed rule, a licensee with ongoing royalty payment ob-
`ligations would have standing to challenge any licensed
`patent so long as the licensee could show that it would
`be subject to a potential infringement suit if it termi-
`nated its license agreement—whether or not the licen-
`see has any actual desire or intention to terminate that
`license agreement if its patent challenge prevails. See
`ibid.; Pet. Reply Br. 3-6. MedImmune does not support
`such a rule, which would be inconsistent with basic Ar-
`ticle III principles.
`1. In MedImmune, two pharmaceutical companies
`entered into a license agreement authorizing one of the
`companies (MedImmune) to practice two patents held
`by the other (Genentech). 549 U.S. at 121. Under the
`terms of the license agreement, MedImmune was re-
`quired to pay royalties on each product that would oth-
`erwise infringe any claims of the specified patents
`
`
`
`

`

`13
`
`“which have neither expired nor been held invalid by a
`court or other body of competent jurisdiction from
`which no appeal has been or may be taken.” Ibid. (quot-
`ing license agreement). It was undisputed that, if one
`of the patents was declared invalid, MedImmune would
`no longer be required to pay royalties connected to that
`patent. See id. at 124; Resp. Genentech, Inc. Br. at 7,
`MedImmune, supra (No. 05-608). MedImmune further
`argued—though Genentech disagreed—that if one of
`the patents was in fact invalid, the license agreement
`entitled MedImmune to withhold royalty payments con-
`nected to that patent even before it obtained a judicial
`declaration of the patent’s invalidity. See MedImmune,
`549 U.S. at 123-125 (discussing the parties’ contractual
`dispute).
`Under those circumstances, this Court held that
`MedImmune could sue for a declaratory judgment that
`one of the covered patents was invalid while it paid roy-
`alties “under protest.” MedImmune, 549 U.S. at 122;
`see id. at 128-132. That approach allowed MedImmune
`to obtain a judicial ruling on the patent’s validity with-
`out first breaching the license agreement and thereby
`risking treble damages and an injunction against the
`sale of its most successful product if its challenge ulti-
`mately was rejected. See id. at 122, 133-134 & n.12. The
`Court observed that the parties had a concrete dispute
`about whether MedImmune owed ongoing royalty pay-
`ments in connection with the challenged patent, and
`that such a dispute would ordinarily be “[]fit for judicial
`resolution.” Id. at 128. The only question was whether
`MedImmune’s choice to pay royalties “under protest,”
`id. at 122, had made the case nonjusticiable by “elimi-
`nat[ing] the imminent threat of harm,” id. at 128. The
`Court held that it had not, explaining that MedImmune
`
`
`
`

`

`14
`
`“was not required, insofar as Article III is concerned,
`to break or terminate” its license agreement in order to
`seek a declaratory judgment that one of the underlying
`patents was invalid. Id. at 137.
`The Court analogized MedImmune’s declaratory-
`judgment action to prior suits in which plaintiffs had
`pursued pre-enforcement challenges to “threatened ac-
`tion by government.” MedImmune, 549 U.S. at 128
`(emphasis omitted). The Court explained that, in such
`cases, a plaintiff need not “expose himself to liability be-
`fore bringing suit to challenge the basis for the threat.”
`Id. at 129. In Terrace v. Thompson, 263 U.S. 197 (1923),
`for example, “the State threatened the plaintiff[s] with
`forfeiture of [their] farm, fines, and penalties” if they
`leased their farm to a Japanese national in violation of
`a state statute that prohibited leases to non-citizens.
`MedImmune, 549 U.S. at 129. “Given th[e] genuine
`threat of enforcement,” the Court “did not require, as a
`prerequisite to testing the validity of the law * * * ,
`that the plaintiff[s] bet the farm, so to speak, by taking
`the violative action” of actually making the lease. Ibid.
`Similarly, in Steffel v. Thompson, 415 U.S. 452 (1974),
`where the plaintiff sued to challenge a state law forbid-
`ding the distribution of handbills, the Court “did not re-
`quire the plaintiff to proceed to distribute handbills and
`risk actual prosecution before he could seek a declara-
`tory judgment regarding the constitutionality of a state
`statute prohibiting such distribution.” MedImmune,
`549 U.S. at 129.
`Although the plaintiffs in both Terrace and Steffel
`had eliminated the imminent threat of enforcement by
`complying with the challenged laws, “[t]hat did not pre-
`clude subject-matter jurisdiction because the threat-
`
`
`
`

`

`15
`
`eliminating behavior was effectively coerced.” MedIm-
`mune, 549 U.S. at 129. The Court in MedImmune con-
`cluded that the same jurisdictional rule should apply
`where a private party (there, Genentech) rather than a
`government actor has engaged in the coercive conduct.
`See id. at 130-134 & n.12. The Court therefore held that
`MedImmune’s ongoing royalty payments did not pre-
`clude it from suing to challenge Genentech’s patent be-
`cause MedImmune had been effectively coerced to
`make those payments rather than “risk treble damages
`and the loss of 80 percent of its business.” Id. at 134.
`2. Petitioner contends (Pet. 15-18) that, under
`Med