throbber

`
`No. 21-
`
`IN THE
`Supreme Court of the United States
`
`
`APPLE INC.,
`
`v.
`
`QUALCOMM INCORPORATED,
`
`Petitioner,
`
`Respondent.
`
`
`ON PETITION FOR A WRIT OF CERTIORARI TO THE
`UNITED STATES COURT OF APPEALS
`FOR THE FEDERAL CIRCUIT
`
`PETITION FOR A WRIT OF CERTIORARI
`
`
`MARK C. FLEMING
` Counsel of Record
`WILMER CUTLER PICKERING
` HALE AND DORR LLP
`60 State Street
`Boston, MA 02109
`(617) 526-6000
`mark.fleming@wilmerhale.com
`
`
`
`CATHERINE M.A. CARROLL
`CLAIRE H. CHUNG
`THOMAS K. BREDAR
`WILMER CUTLER PICKERING
` HALE AND DORR LLP
`1875 Pennsylvania Ave., NW
`Washington, DC 20006
`(202) 663-6000
`
`LAUREN A. DEGNAN
`CHRISTOPHER W. DRYER
`FISH & RICHARDSON P.C.
`1000 Maine Ave., Suite 1000
`Washington, DC 20024
`(202) 783-5070
`
`
`
`

`

`
`
`QUESTION PRESENTED
`
`In MedImmune, Inc. v. Genentech, Inc., 549 U.S.
`118 (2007), this Court held that, under Article III, a pa-
`tent licensee may challenge the validity of a patent cov-
`ered 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 validi-
`ty of two of those patents in appeals from inter partes
`reviews—a mechanism that Congress created precisely
`to facilitate challenges to questionable patents, includ-
`ing through appeal—because the license agreement co-
`vers multiple patents, such that invalidation of the two
`patents-in-suit would not by itself alter Apple’s pay-
`ment obligations under the license agreement.
`The question presented is:
`Whether a licensee has Article III standing to chal-
`lenge the validity of a patent covered by a license
`agreement that covers multiple patents.
`
`(i)
`
`

`

`
`
`PARTIES TO THE PROCEEDING
`
`Petitioner Apple Inc. was the petitioner in proceed-
`ings before the Patent Trial and Appeal Board and the
`appellant in the court of appeals in Nos. 20-1561 and 20-
`1642.
`Respondent Qualcomm Incorporated was the pa-
`tent owner in proceedings before the Patent Trial and
`Appeal Board and the appellee in the court of appeals
`in Nos. 20-1561 and 20-1642.
`
`(ii)
`
`

`

`
`
`CORPORATE DISCLOSURE STATEMENT
`
`Apple Inc. has no parent company, and no publicly
`held corporation owns 10% or more of its stock.
`
`(iii)
`
`

`

`
`
`RELATED PROCEEDINGS
`
`United States Court of Appeals for the Federal
`Circuit:
`A. Apple Inc. v. Qualcomm Incorporated, No. 20-
`1561 (Fed. Cir.) (consolidated with No. 20-1642 for pur-
`poses of oral argument; judgment issued April 7, 2021;
`rehearing denied July 20, 2021)
`B. Apple Inc. v. Qualcomm Incorporated, No. 20-
`1642 (Fed. Cir.) (consolidated with No. 20-1561 for pur-
`poses of oral argument; judgment issued April 7, 2021;
`rehearing denied July 20, 2021)
`Patent Trial and Appeal Board:
`A. Apple Inc. v. Qualcomm Incorporated, Case
`IPR2018-01279 (P.T.A.B.) (final written decision en-
`tered Jan. 2, 2020)
`B. Apple Inc. v. Qualcomm Incorporated, Case
`IPR2018-01252 (P.T.A.B.) (final written decision en-
`tered Jan. 22, 2020)
`
`
`
`
`(iv)
`
`

`

`
`
`TABLE OF CONTENTS
`
`Page
`QUESTION PRESENTED ............................................... i
`PARTIES TO THE PROCEEDING .............................. ii
`CORPORATE DISCLOSURE STATEMENT ............ iii
`RELATED PROCEEDINGS.......................................... iv
`TABLE OF AUTHORITIES ........................................viii
`INTRODUCTION .............................................................. 1
`OPINIONS BELOW ........................................................... 4
`JURISDICTION .................................................................. 5
`CONSTITUTIONAL AND
`STATUTORY
`PROVISIONS INVOLVED ............................................... 5
`STATEMENT ...................................................................... 5
`A. The
`Patents And
`Qualcomm’s
`Infringement Suit ................................................. 5
`B. The Parties’ License Agreement ........................ 8
`C. Federal Circuit Proceedings ............................. 10
`REASONS FOR GRANTING THE PETITION ........... 13
`I. THE DECISION BELOW CONFLICTS WITH
`THIS COURT’S ARTICLE III PRECEDENT ................ 14
`A. MedImmune, Cardinal Chemical, And
`Altvater Make Clear That Patents
`Subject To A License Agreement May
`Be Challenged Regardless Of Any
`Contractual Dispute Over Payment
`Obligations ........................................................... 15
`
`(v)
`
`

`

`vi
`
`TABLE OF CONTENTS—Continued
`
`Page
`
`B. The Federal Circuit’s Decision
`Conflicts With This Court’s Precedent ............ 18
`II. THE
`QUESTION
`PRESENTED
`IS
`EXCEPTIONALLY IMPORTANT ................................... 25
`CONCLUSION ................................................................. 31
` APPENDIX A: Opinion of the United States
`Court of Appeals for the Federal Circuit,
`dated April 17, 2021 ................................................... 1a
`APPENDIX B: Decision of the Patent Trial
`and Appeal Board, dated January 22, 2020 .......... 13a
`APPENDIX C: Decision of the Patent Trial
`and Appeal Board, dated January 2, 2020 ............ 53a
`APPENDIX D: Order of the United States
`Court of Appeals for the Federal Circuit
`denying petition for panel rehearing and
`petition for rehearing en banc in No. 20-
`1561, dated July 20, 2021 ......................................... 81a
`APPENDIX E: Order of the United States
`Court of Appeals for the Federal Circuit
`denying petition for panel rehearing and
`petition for rehearing en banc in No. 20-
`1642, dated July 20, 2021 ......................................... 83a
`APPENDIX F: Judgment of the United States
`Court of Appeals for the Federal Circuit, in
`No. 20-1561, dated April 7, 2021 ............................. 85a
`APPENDIX G: Judgment of the United States
`Court of Appeals for the Federal Circuit, in
`No. 20-1642, dated April 7, 2021 ............................. 87a
`
`
`
`

`

`vii
`
`TABLE OF CONTENTS—Continued
`
`Page
`
`APPENDIX H: Relevant Constitutional and
`Statutory Provisions
`U.S. Const. art. III ............................................ 89a
`28 U.S.C. § 1295(a)(1), (4) ................................. 91a
`35 U.S.C. § 141 ................................................... 93a
`35 U.S.C. § 315(e) .............................................. 95a
`35 U.S.C. § 319 ................................................... 96a
`
`
`
`

`

`viii
`
`TABLE OF AUTHORITIES
`
`CASES
`
`Page(s)
`
`Aetna Life Insurance Co. of Hartford,
`Connecticut v. Haworth, 300 U.S. 227
`(1937) ............................................................................ 19
`Already, LLC v. Nike, Inc., 568 U.S. 85 (2013) ............. 18
`Altvater v. Freeman, 319 U.S. 359 (1943) ................ 16, 19
`Apotex, Inc. v. Daiichi Sankyo, Inc., 781 F.3d
`1356 (Fed. Cir. 2015) .................................................. 21
`Apple Inc. v. Qualcomm Inc., Nos. 20-1683, 20-
`1763, 20-1764, 20-1827, 2021 WL 5227094
`(Fed. Cir. Nov. 10, 2021) ........................ 3, 4, 13, 21, 25
`Arkema Inc. v. Honeywell International, Inc.,
`706 F.3d 1351 (Fed. Cir. 2013) .................................. 21
`AVX Corp. v. Presidio Components, Inc., 923
`F.3d 1357 (Fed. Cir. 2019) ......................................... 25
`v.
`Blonder-Tongue
`Laboratories,
`Inc.
`University of Illinois Foundation, 402 U.S.
`313 (1971) ..................................................................... 27
`Cardinal Chemical Co. v. Morton International,
`Inc., 508 U.S. 83 (1993) ............................ 17, 23, 24, 25
`Cuozzo Speed Technologies., LLC v. Lee, 136 S.
`Ct. 2131 (2016) ......................................................... 8, 27
`Edward Katzinger Co. v. Chicago Metallic
`Manufacturing Co., 329 U.S. 394 (1947) ................. 26
`FTC v. Actavis, Inc., 570 U.S. 136 (2013) ...................... 27
`General Electric Co. v. United Technologies
`Corp., 928 F.3d 1349 (Fed. Cir. 2019) ..................... 28
`
`
`
`

`

`ix
`
`TABLE OF AUTHORITIES—Continued
`
`Page(s)
`
`JTEKT Corp. v. GKN Automotive Ltd., 898
`F.3d 1217 (Fed. Cir. 2018) ......................................... 10
`Keeling v. Sheet Metal Workers International
`Ass’n, Local Union 162, 937 F.2d 408 (9th
`Cir. 1991) ...................................................................... 24
`Kimble v. Marvel Entertainment, LLC, 576
`U.S. 446 (2015) .............................................................. 9
`Lake Carriers’ Ass’n v. MacMullan, 406 U.S.
`498 (1972) ..................................................................... 19
`Lear, Inc. v. Adkins, 395 U.S. 653 (1969) ........... 26, 27, 30
`Macom Technology Solutions Holdings, Inc. v.
`Infineon Technologies AG, 881 F.3d 1323
`(Fed. Cir. 2018) ............................................................. 9
`Marek v. Chesny, 473 U.S. 1 (1985) ................................ 30
`Maryland Casualty Co. v. Pacific Coal & Oil
`Co., 312 U.S. 270 (1941) ............................................. 22
`MedImmune, Inc. v. Genentech, Inc., 549 U.S.
`118 (2007) ............................................................ passim
`Phigenix, Inc. v. Immunogen, Inc., 845 F.3d
`1168 (Fed. Cir. 2017) ............................................ 10, 28
`Precision Instrument Manufacturing Co. v.
`Automotive Maintenance Machinery Co.,
`324 U.S. 806 (1945) ..................................................... 27
`SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348
`(2018) .............................................................................. 8
`Spokeo, Inc. v. Robins, 136 S. Ct. 1540 (2016) ............... 28
`
`
`
`

`

`x
`
`TABLE OF AUTHORITIES—Continued
`
`Page(s)
`
`St. Louis Mining & Milling Co. v. Montana
`Mining Co., 171 U.S. 650 (1898) ............................... 30
`Thryv, Inc. v. Click-To-Call Technologies, LP,
`140 S. Ct. 1367 (2020) ................................................. 26
`TransCore, LP v. Electronic Transaction Con-
`sultants, 563 F.3d 1271 (Fed. Cir. 2009) ................... 9
`United States v. Studiengesellschaft Kohle,
`m.b.H., 670 F.2d 1122 (D.C. Cir. 1981) ...................... 9
`United States v. Williams, 504 U.S. 36 (1992) .............. 11
`Village of Arlington Heights v. Metropolitan
`Housing Development Corp., 429 U.S. 252
`(1977) ............................................................................ 21
`Warth v. Seldin, 422 U.S. 490 (1975) .............................. 21
`
`DOCKETED CASES
`Apple Inc. v. Qualcomm Inc., No. 17-cv-00108
`(S.D. Cal.) ....................................................................... 7
`Apple Inc. v. Qualcomm Inc., Nos. 20-1683, 20-
`1763, 20-1827 (Fed. Cir.) ............................................ 25
`In re Certain Mobile Electric Devices and
`Radio Frequency Components Thereof,
`Investigation No. 337-ITC-1065
`(Int’l
`Trade Comm’n) ............................................................. 7
`In re Certain Mobile Electronic Devices and
`Radio Frequency Components Thereof,
`Investigation No. 337-TA-1093 (Int’l Trade
`Comm’n) ......................................................................... 7
`
`
`
`

`

`xi
`
`TABLE OF AUTHORITIES—Continued
`
`Page(s)
`
`Qualcomm Inc. v. Apple Inc., No. 17-cv-01375
`(S.D. Cal.) ....................................................................... 7
`Qualcomm Inc. v. Apple Inc., No. 17-cv-02398
`(S.D. Cal.) ....................................................................... 7
`Qualcomm Inc. v. Apple Inc., No. 17-cv-02402
`(S.D. Cal.) ....................................................................... 7
`Qualcomm Inc. v. Apple Inc., No. 17-cv-02403
`(S.D. Cal.) ................................................................... 7, 8
`
`CONSTITUTIONS, STATUTES, AND RULES
`U.S. Const. art III .................................................... passim
`28 U.S.C.
`§ 1254 .............................................................................. 5
`§ 1295 ...................................................................... 10, 25
`35 U.S.C.
`§ 141 .................................................................... 5, 10, 26
`§ 314 ................................................................................ 8
`§ 315 ...................................................................... 5, 8, 24
`§ 318 ................................................................................ 8
`§ 319 .......................................................................... 5, 10
`Fed. R. Civ. P. 60 ............................................................... 24
`S. Ct. R. 12.4 ......................................................................... 1
`
`OTHER AUTHORITIES
`Chien, Colleen, From Arms Race
`to
`Marketplace:
`The Complex Patent
`Ecosystem and Its Implications for the
`Patent System, 62 Hastings L.J. 297 (2010) ........... 29
`
`
`
`

`

`xii
`
`TABLE OF AUTHORITIES—Continued
`
`Page(s)
`
`Chien, Colleen, Software Patents as a
`Currency, Not Tax, on Innovation, 31
`Berkeley Tech. L.J. 1669 (2016) ............................... 28
`Clayton, Lewis R., ‘MedImmune’ Ruling, Nat’l
`L.J. 13 (Feb. 19, 2007) ................................................ 28
`H.R. Rep. No. 112-98 (2011) ............................................. 26
`Lemley, Mark A. & A. Douglas Melamed,
`Missing the Forest for the Trolls, 113
`Colum. L. Rev. 2117 (2013) ....................................... 29
`Litan, Robert & Hal Singer, Unlocking
`Patents: Costs of Failure, Benefits of
`Success, Economists Incorporated (2014) .............. 28
`S. Rep. No. 110-259 (2008) ................................................ 26
`
`
`
`
`

`

`
`
`IN THE
`Supreme Court of the United States
`
`No. 21-
`
`
`APPLE INC.,
`
`v.
`
`Petitioner,
`
`QUALCOMM INCORPORATED,
`
`Respondent.
`
`
`ON PETITION FOR A WRIT OF CERTIORARI TO THE
`UNITED STATES COURT OF APPEALS
`FOR THE FEDERAL CIRCUIT
`
`PETITION FOR A WRIT OF CERTIORARI
`
`
`Apple Inc. respectfully petitions for a writ of certi-
`orari to review the judgments of the United States
`Court of Appeals for the Federal Circuit in these cases.
`See S. Ct. R. 12.4.
`
`INTRODUCTION
`In 2007, this Court made clear that, under Article
`III, a party who takes a license to a patent and makes
`ongoing payments under the license agreement to avert
`costly and risky litigation may nonetheless challenge
`the patent’s validity in court and need not breach the
`license to do so. MedImmune, Inc. v. Genentech, Inc.,
`549 U.S. 118 (2007). In this case, however, the court of
`appeals wrongly held that a party loses Article III
`
`
`
`

`

`2
`
`standing to challenge a patent if it enters into a license
`agreement to settle litigation, merely because the
`agreement covers multiple patents in addition to the
`ones being challenged and the licensee’s payment obli-
`gations would not change based on the invalidity of the
`specific patents-in-suit. That holding presents an ex-
`ceptionally important question warranting this Court’s
`review.
`In 2017, respondent Qualcomm Incorporated
`(“Qualcomm”) brought multiple suits against Apple for
`allegedly infringing several patents, including the two
`at issue here. While those suits were pending, Apple
`challenged many of those patents in inter partes re-
`views (“IPRs”)—a mechanism that Congress created to
`allow parties to challenge patents before the Patent
`Trial and Appeal Board (“Board”) with a right of appeal
`to the U.S. Court of Appeals for the Federal Circuit.
`The parties ultimately settled Qualcomm’s infringe-
`ment suits in 2019, while agreeing that Apple’s IPRs
`would continue through any appeal. Apple and Qual-
`comm also entered into a license agreement under
`which Apple would make ongoing payments for a port-
`folio of patents, including the patents-in-suit, in ex-
`change for Qualcomm’s promise not to sue Apple while
`the agreement was in force. The license agreement is
`temporary and will expire years before the two pa-
`tents-in-suit do, because Qualcomm refused Apple’s
`proposal of a license extending for the life of the pa-
`tents.
`After the Board issued decisions in Apple’s IPRs
`finding the patents’ challenged claims not unpatentable,
`Apple appealed, but the Federal Circuit dismissed the
`appeals for lack of Article III standing. The Federal
`Circuit acknowledged that, under MedImmune, a licen-
`see’s payment of royalties under protest to avoid the
`
`
`
`

`

`3
`
`threat of an infringement suit does not eliminate stand-
`ing. But the court distinguished this case because Ap-
`ple pays royalties for “tens of thousands” of patents in
`the Qualcomm portfolio and the invalidity of the pa-
`tents-in-suit would not affect Apple’s payment obliga-
`tions under the license agreement. App. 7a-8a.
`That decision conflicts with this Court’s precedent
`by allowing patent owners to negotiate themselves out
`of Article III jurisdiction by licensing patents in bulk,
`rather than one-by-one—an obvious end-run around
`MedImmune that has no doctrinal basis. Indeed, there
`is unquestionably a threat of infringement litigation
`sufficient to support standing because Qualcomm has
`already asserted the patents against Apple and has not
`disclaimed its intention to do so again once the license
`agreement terminates. Meanwhile, under the Federal
`Circuit’s approach, a challenger like Apple who settles
`a suit would lose the right to appeal an unfavorable
`IPR decision, and—due to statutory estoppel—might
`not be able to reassert invalidity in the event the pa-
`tent owner sues again after the license agreement ex-
`pires. Thus, under the Federal Circuit’s approach, the
`only certain way for a licensee to challenge patent va-
`lidity in comparable situations is to repudiate the port-
`folio license agreement altogether and face the serious
`consequences of a likely infringement suit—a result
`that this Court expressly rejected in MedImmune.
`Judge Newman agreed that Apple has standing in
`these circumstances, dissenting from a recently issued
`follow-on decision involving the same parties. See Ap-
`ple Inc. v. Qualcomm Inc., Nos. 20-1683, 20-1763, 20-
`1764, 20-1827, 2021 WL 5227094 (Fed. Cir. Nov. 10,
`2021) (“Apple II”) (Newman, J., dissenting). As Judge
`Newman explained, Apple’s “concern is with the pa-
`tents here on appeal, not a portfolio of patents for
`
`
`
`

`

`4
`
`which no infringement charge has been made,” and in
`that situation “extensive precedent” shows that “a pa-
`tent licensee has standing to challenge validity of the
`patents to which it is licensed, including challenge in
`federal court on appeal from [IPR] decisions.” Id. at *7
`(Newman, J., dissenting). The court of appeals never-
`theless deemed the decision below binding and again
`rejected Apple’s standing.
`The question presented has broad impact. The
`Federal Circuit has exclusive jurisdiction over patent
`appeals, and portfolio licensing is a common practice.
`The decision below would thus undermine important
`public interests in encouraging challenges to question-
`able patents, particularly by licensees. The Federal
`Circuit’s restrictive approach to standing also under-
`mines the public policy of ensuring that settlement of
`litigation does not unfairly deprive patent challengers
`of the ability to demonstrate patent invalidity.
`The Court should grant certiorari and reverse the
`judgments of the Federal Circuit.
`
`OPINIONS BELOW
`The Federal Circuit’s consolidated opinion resolv-
`ing Nos. 20-1561 and 20-1642 (App. 1a-11a) is reported
`at 992 F.3d 1378. The court’s orders denying rehearing
`in No. 20-1561 (App. 81a-82a) and in No. 20-1642 (App.
`83a-84a) are unreported. The Patent Trial and Appeal
`Board’s final written decision regarding U.S. Patent
`7,844,037 (App. 53a-79a) is available at 2020 Pat. App.
`LEXIS 9167, and the Board’s final written decision re-
`garding U.S. Patent No. 8,683,362 (App. 13a-52a) is
`available at 2020 WL 373197.
`
`
`
`

`

`5
`
`JURISDICTION
`The Federal Circuit entered judgments on April 7,
`2021. App. 85a; App. 87a. Apple’s timely petitions for
`rehearing were denied on July 20, 2021. On September
`9, 2021, the Chief Justice granted Apple’s application to
`extend the time within which to file a petition for a writ
`of certiorari to and including November 17, 2021. This
`Court has jurisdiction under 28 U.S.C. § 1254(1).
`
`CONSTITUTIONAL AND STATUTORY
`PROVISIONS INVOLVED
`Article III of the U.S. Constitution and the rele-
`vant statutory provisions, 35 U.S.C. §§ 141, 315(e), 319,
`are reproduced in the appendix to this petition.
`
`STATEMENT
`A. The Patents And Qualcomm’s Infringement
`Suit
`Apple makes mobile electronic devices such as
`iPhones. Qualcomm produces chips that go into some
`Apple devices and, as relevant here, owns U.S. Patent
`No. 7,844,037 (the “’037 patent”) and U.S. Patent No.
`8,683,362 (the “’362 patent”). Those patents involve as-
`pects of cellular phone communication that were well-
`known in the prior art.
`The ’037 patent. A mobile phone user sometimes
`wishes to respond to a call with a text message, rather
`than answering the call. Representative claim 1 of the
`’037 patent claims a technique for providing automated
`assistance to such users by enabling “message replies.”
`20-1561 A32 (1:64-65); see also 20-1561 A36 (9:63-10:15)
`
`
`
`

`

`6
`
`(claim 1).1 The patent states that, upon receiving a call,
`a “computing device” (such as a smartphone), 20-1561
`A33 (4:60-63), may present “reply options” to the user,
`such as “answering the call, declining the call,” or “mes-
`sag[ing]” the caller instead of answering, 20-1561 A35
`(7:38-41). The user provides “user input” as to how to
`“handle” the call. 20-1561 A36 (10:6-11). If, for exam-
`ple, the user instructs the phone to respond with a text
`message, the phone may perform a series of acts to
`compose a message—i.e., “opening a new message,”
`“addressing the message,” “including a message con-
`tent” or “body for the message,” and sending the mes-
`sage response. 20-1561 A34 (5:6-11). According to the
`patent, “some or all of the steps of sending the message
`response [] may be performed automatically.” 20-1561
`A34 (5:16-17).
`The ’362 patent. The ’362 patent claims a computer
`system that facilitates the display and use of multiple
`applications at the same time on a small screen, such as
`on a cell phone. Specifically, the patent discloses using
`different “modes” between which a user can toggle to
`interact with multiple applications. 20-1642 A64 (2:51-
`59). In some embodiments of the purported invention,
`the ’362 patent also describes using gestures to move
`different “cards,” which are areas of the screen repre-
`senting a particular activity or application. 20-1642 A65
`(3:14-19); see also 20-1642 A64-65 (2:60-3:48). A user
`can “dismiss activities” or close a card by, for example,
`“clicking on a control within the card,” “dragging the
`card upward off screen,” “or performing a flicking ac-
`tion in an upward direction.” 20-1642 A69 (12:12-17);
`
`
`1 “20-1561 A” and “20-1642 A” refer to the appendices filed in
`the corresponding Federal Circuit dockets. Patents are cited in
`parentheticals as “[column]:[line].”
`
`
`
`

`

`7
`
`20-1642 A814-815; see also 20-1642 A75-76 (24:31-25:7)
`(claim 1, which is representative of the other relevant
`’362 patent claims).
`In 2017, Qualcomm brought six district court and
`International Trade Commission actions accusing Ap-
`ple of infringing various patents.2 In one such suit,
`Qualcomm alleged that Apple’s mobile devices in-
`fringed the ’037 and ’362 patents. See Qualcomm Inc.
`v. Apple Inc., No. 17-cv-02403, ECF No. 1 (S.D. Cal.
`Nov. 29, 2017) (“Qualcomm”). Qualcomm sought a dec-
`laration of infringement, damages no less than a rea-
`sonable royalty, a permanent injunction against in-
`fringement, attorney’s fees, and costs. Id. at 35-36.
`Apple counterclaimed that the ’037 and ’362 patents are
`invalid as anticipated or obvious and that Apple did not
`infringe them. See id., ECF No. 51, at 36-39, 48-50.
`While that suit was ongoing, Apple petitioned for
`IPRs challenging certain claims of the ’037 and ’362 pa-
`tents as invalid.3 IPR is an administrative process that
`allows any person other than the patent owner to chal-
`
`
`2 See Qualcomm Inc. v. Apple Inc., No. 17-cv-02403 (S.D. Cal.
`Nov. 29, 2017); No. 17-cv-02402 (S.D. Cal. Nov. 29, 2017); No. 17-
`cv-02398 (S.D. Cal. Nov. 29, 2019); No. 17-cv-01375 (S.D. Cal. July
`6, 2017); In re Certain Mobile Elec. Devices and Radio Frequency
`Components Thereof, Investigation No. 337-TA-1093 (Nov. 30,
`2017) (Int’l Trade Comm’n); In re Certain Mobile Elec. Devices
`and Radio Frequency Components Thereof, Investigation No. 337-
`ITC-1065 (July 7, 2017) (Int’l Trade Comm’n); see also First
`Amended Complaint ¶¶102-125, 137-142, Apple Inc. v. Qualcomm
`Inc., No. 17-cv-00108 (S.D. Cal. June 20, 2017), ECF No. 83.
`3 Apple’s IPR petitions challenged claims 1-14 and 16-25 of
`the ’037 patent and claims 1-6 and 8-20 of the ’362 patent. App. 2a.
`The Board “did not institute on claims 19-25 of the ’037 patent be-
`cause Qualcomm statutorily disclaimed them.” App. 3a n.1. The
`rest are at issue in these appeals.
`
`
`
`

`

`8
`
`lenge the validity of a patent for obviousness or lack of
`novelty. See Cuozzo Speed Techs., LLC v. Lee, 136 S.
`Ct. 2131, 2136 (2016). The United States Patent and
`Trademark Office may institute an IPR if it finds “a
`reasonable likelihood that the petitioner would prevail
`with respect to” at least one of the challenged claims.
`35 U.S.C. § 314(a); see Cuozzo, 136 S. Ct. at 2137. Once
`an IPR is instituted (and not dismissed), the Board
`must “issue a final written decision with respect to the
`patentability of any patent claim challenged by the pe-
`titioner.” 35 U.S.C. § 318(a); SAS Inst., Inc. v. Iancu,
`138 S. Ct. 1348, 1359-1360 (2018). The statute provides
`that, after a final written decision, an IPR petitioner is
`estopped from challenging the same patent claims in a
`subsequent IPR, in court, or before the International
`Trade Commission “on any ground that the petitioner
`raised or reasonably could have raised during that”
`IPR. 35 U.S.C. § 315(e).
`The district court stayed Qualcomm’s suit, see
`Qualcomm, ECF No. 177, at 6, and the Board institut-
`ed IPRs, including the IPRs challenging the ’037 and
`’362 patents, finding a reasonable likelihood that Ap-
`ple’s challenges would succeed, see id., ECF Nos. 180,
`181, 182; App. 2a-3a.
`Qualcomm’s suit was ultimately dismissed with
`prejudice when, in April 2019, the parties entered into a
`global settlement of all litigation between them. See
`App. 5a-6a; Qualcomm, ECF No. 184. As explained
`below, the settlement did not resolve Apple’s IPRs
`challenging the ’037 and ’362 patents.
`
`B. The Parties’ License Agreement
`As part of the settlement, the parties executed a
`six-year license agreement with a possible two-year ex-
`
`
`
`

`

`9
`
`tension. App. 5a-6a. Sometimes called a “license” or a
`“covenant not to sue,” TransCore, LP v. Electronic
`Transaction Consultants Corp., 563 F.3d 1271, 1276
`(Fed. Cir. 2009), a license agreement is in essence “‘a
`promise by the licensor not to sue the licensee,’” Ma-
`com Tech. Sols. Holdings, Inc. v. Infineon Techs. AG,
`881 F.3d 1323, 1329 (Fed. Cir. 2018); see also United
`States v. Studiengesellschaft Kohle, m.b.H., 670 F.2d
`1122, 1127 (D.C. Cir. 1981) (“A license is an agreement
`by the patentee, usually for a consideration, not to sue
`the licensee of the patent for infringement of the pa-
`tent.”). In exchange, the licensee typically makes pay-
`ments to the licensor, often called royalties. See Kim-
`ble v. Marvel Entm’t, LLC, 576 U.S. 446, 451 (2015) (pa-
`tent owner may “sell or license [its exclusive rights] for
`royalty payments”).
`The license agreement in this case is, in effect, a
`temporary and conditional covenant not to sue. The
`agreement covers a portfolio of “tens of thousands” of
`patents, including the ’037 and ’362 patents, and re-
`quires Apple to make ongoing payments. App. 7a. In
`exchange, Qualcomm promised not to sue Apple for in-
`fringement of the covered patents during the term of
`the license agreement, so long as Apple makes the re-
`quired payments. App. 5a-6a.
`Apple had proposed an irrevocable license or other
`permanent rights to the ’037 and ’362 patents, with a
`covenant by Qualcomm not to sue Apple for the life of
`the licensed patents. See App. 10a; 20-1642 A2931.
`Such an agreement would have settled Apple’s IPRs in
`addition to Qualcomm’s infringement suits and the In-
`ternational Trade Commission cases. But Qualcomm
`refused. See App. 10a. As a consequence, the parties
`agreed that Apple’s IPRs challenging the ’037 and ’362
`patents would continue through final resolution, includ-
`
`
`
`

`

`10
`
`ing appeal, despite the settlement and the license
`agreement. See 20-1642 A2931. The license agreement
`will expire in 2025 (or 2027 if extended)—years before
`the ’037 and ’362 patents expire. See App. 6a.
`
`C. Federal Circuit Proceedings
`In January 2020, the Board issued final written de-
`cisions in Apple’s IPRs finding all challenged claims of
`the ’037 and ’362 patents not unpatentable. App. 53a-
`79a; App. 13a-52a. Apple timely appealed. See 28
`U.S.C. § 1295(a)(4).
`The patent statute provides that a party to an IPR
`“who is dissatisfied with” the Board’s final written de-
`cision “may appeal” that decision to the Federal Cir-
`cuit. 35 U.S.C. § 141(c); see also id. § 319 (“Any party
`to the inter partes review shall have the right to be a
`party to the appeal.”). Despite that statutory right to
`appeal the Board’s final written decision, the Federal
`Circuit has held that the IPR petitioner must inde-
`pendently demonstrate Article III standing to pursue
`such an appeal. Phigenix, Inc. v. Immunogen, Inc., 845
`F.3d 1168, 1171-1172, 1175 (Fed. Cir. 2017). Under
`Federal Circuit precedent, an IPR petitioner may es-
`tablish the necessary injury in fact if “it is engaged or
`will likely engage ‘in an[] activity that would give rise
`to a possible infringement suit,’” JTEKT Corp. v. GKN
`Auto. Ltd., 898 F.3d 1217, 1220 (Fed. Cir. 2018), or “has
`contractual rights that are affected by a determination
`of patent validity,” id. (citing MedImmune, 549 U.S. at
`137), such as under a patent license.
`Apple argued that it has standing to pursue its ap-
`peals because Qualcomm has already sued Apple for
`allegedly infringing the ’037 and ’362 patents, and under
`MedImmune the settlement and the license agree-
`
`
`
`

`

`11
`
`ment—under which Apple makes ongoing payments to
`avoid the threat of an infringement suit and the conse-
`quences it could impose—supported Article III juris-
`diction. 20-1642 C.A. Reply Br. 20-25. Apple explained
`that the threat of Qualcomm’s infringement suit re-
`mains because Qualcomm refused Apple’s proposal of a
`license for the life of the patents or other permanent
`rights to the two patents, and because Qualcomm has
`enforced its patents against Apple after other agree-
`ments expired. Id. 23-24 & n.6. Apple also relied on
`the risk that, if Apple could not appeal now, Apple
`would potentially be statutorily estopped under Section
`315 from ever again challenging the validity of the ’037
`and ’362 patents on any ground that it raised or reason-
`ably could have raised in the IPRs at issue here—even
`though Qualcomm is likely to sue Apple again for in-
`fringement. Id. at 24-25.4
`In a published decision, the Federal Circuit dis-
`missed Apple’s appeals for lack of Article III standing,
`without addressing the merits of Apple’s validity chal-
`lenges. In its view, Qualcomm’s prior infringement suit
`did not establish standing because it was dismissed
`with prejudice due to the settlement. App. 10a. And
`although the court acknowledged that, under MedIm-
`mune, a licensee is “not required to break or terminate
`the license agreement before seeking a declaratory
`
`4 Apple made similar arguments in the 20-1561 appeal. See
`20-1561 C.A. Reply Br. 24-28. Apple addressed standing in its re-
`ply briefs after Qualcomm opposed Apple’s standing. Although
`the Federal Circuit initially found waiver because Apple did not
`argue standing in its opening briefs, the court proceeded to ad-
`dress standing, App. 4a-5a, making it appropriate for this Court’s
`review even if the court of appeals’ finding of waiver had been cor-
`rect. See Un

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