US Supreme Court passes on Apple's bid to revive Qualcomm patent invalidation

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The U.S. Supreme Court has declined to hear an Apple bid to revive an effort to invalidate a pair of Qualcomm patents, despite the settlement between the two companies.

Credit: Laurenz Heymann/Unsplash
Credit: Laurenz Heymann/Unsplash


The justices on Monday passed on Apple's appeal of a lower court ruling, stating that the iPhone maker lacked the standing to pursue the matter because of a settlement in 2019 between the two companies, Reuters has reported.

Qualcomm filed a lawsuit in 2017 against Apple, alleging that the company's iPhones and other devices infringed on some of its mobile patents. In 2019, the parties settled the litigation and signed an agreement that allowed Apple to continue using Qualcomm modems in its smartphones.

While that settlement included licenses to many of Qualcomm's patents, it also allowed an Apple bid to challenge the validity of two patents at the Patent and Trademark Office's Patent Trial and Appeal Board (PTAB).

The PTAB ruled in Qualcomm's favor. In November, the U.S. Court of Appeals for the Federal Circuit dismissed Apple's appeal, stating that its settlement with Qualcomm precluded it from attempting to invalidate the San Diego chipmaker's patents.

Apple argued to the Supreme Court that Qualcomm could again sue it after the settlement expires in 2025, noting that the chipmaker has a "history of aggressively enforcing its patents."

In a brief to the Supreme Court in May, the Biden Administration urged the justices to reject Apple's appeal.

Read on AppleInsider

Comments

  • Reply 1 of 14
    Why didn’t they just settle all the issues between them in 2019 instead of leaving this matter unresolved?
    watto_cobra
  • Reply 2 of 14
    gatorguygatorguy Posts: 23,393member
    Why didn’t they just settle all the issues between them in 2019 instead of leaving this matter unresolved?
    I imagine that Qualcomm thought all the issues WERE resolved with the licensing agreement. This is Apple, and both the Appeals Court and Scotus were correct in refusing to consider this after-the-fact move IMHO. 
    muthuk_vanalingamlkruppdarkvader
  • Reply 3 of 14
    gatorguy said:
    Why didn’t they just settle all the issues between them in 2019 instead of leaving this matter unresolved?
    I imagine that Qualcomm thought all the issues WERE resolved with the licensing agreement. This is Apple, and both the Appeals Court and Scotus were correct in refusing to consider this after-the-fact move IMHO. 
    To be clear here, Apple is the company that lost the appeal.
    lkrupp
  • Reply 4 of 14
    gatorguygatorguy Posts: 23,393member
    gatorguy said:
    Why didn’t they just settle all the issues between them in 2019 instead of leaving this matter unresolved?
    I imagine that Qualcomm thought all the issues WERE resolved with the licensing agreement. This is Apple, and both the Appeals Court and Scotus were correct in refusing to consider this after-the-fact move IMHO. 
    To be clear here, Apple is the company that lost the appeal.
    Correct. It was not anything initiated by Qualcomm, which is why I said QC likely thought everything was settled when Apple agreed to take a new license. it was Apple trying to take on Qualcomm again after-the-fact. Since they had already come to a contract the courts properly told Apple that couldn't now argue they didn't REALLY agree to licensing the patents, and since they were paying a license to ALL the patents there's no harm no foul. 
    edited June 27 muthuk_vanalingam
  • Reply 5 of 14
    noting that the chipmaker has a "history of aggressively enforcing its patents." 

    Read on AppleInsider

    As does Apple.  As does any company that wishes to protect its intellectual property.
    FileMakerFeller
  • Reply 6 of 14
    bloggerblogbloggerblog Posts: 2,238member
    Sounds like Apple wants the opportunity to prove Qualcomm's patents are not original and therefore invalid. So that when 2025 comes around Qualcomm won't jump back on the lawsuit wagon. Sounds like a valid concern to me.
    danoxFileMakerFellerwatto_cobra
  • Reply 7 of 14
    gatorguygatorguy Posts: 23,393member
    Sounds like Apple wants the opportunity to prove Qualcomm's patents are not original and therefore invalid. So that when 2025 comes around Qualcomm won't jump back on the lawsuit wagon. Sounds like a valid concern to me.
    Yes it could be a valid concern when there's no longer a contract, but not one that gave Apple standing to challenge the validity and claim harm now that they've greed to one. 
    darkvader
  • Reply 8 of 14
    carnegiecarnegie Posts: 994member
    Why didn’t they just settle all the issues between them in 2019 instead of leaving this matter unresolved?
    Parties often resolve broader issues through settlement agreements while agreeing to leave some issues to be resolved by, e.g, further litigation. It's a way of not letting smaller - perhaps less consequential - matters hold up agreements on larger matters.
    FileMakerFellerwatto_cobra
  • Reply 9 of 14
    carnegiecarnegie Posts: 994member
    gatorguy said:
    Why didn’t they just settle all the issues between them in 2019 instead of leaving this matter unresolved?
    I imagine that Qualcomm thought all the issues WERE resolved with the licensing agreement. This is Apple, and both the Appeals Court and Scotus were correct in refusing to consider this after-the-fact move IMHO. 
    gatorguy said:
    gatorguy said:
    Why didn’t they just settle all the issues between them in 2019 instead of leaving this matter unresolved?
    I imagine that Qualcomm thought all the issues WERE resolved with the licensing agreement. This is Apple, and both the Appeals Court and Scotus were correct in refusing to consider this after-the-fact move IMHO. 
    To be clear here, Apple is the company that lost the appeal.
    Correct. It was not anything initiated by Qualcomm, which is why I said QC likely thought everything was settled when Apple agreed to take a new license. it was Apple trying to take on Qualcomm again after-the-fact. Since they had already come to a contract the courts properly told Apple that couldn't now argue they didn't REALLY agree to licensing the patents, and since they were paying a license to ALL the patents there's no harm no foul. 

    Qualcomm was aware of these ongoing proceedings and, in agreeing to settle most matters with Apple, also agreed to allow them to continue. Apple and Qualcomm weren't able to come to an agreement to resolve issues related to these particular patents. These weren't new issues that Apple brought up after the settlement agreement. It just appealed the IPR decisions which were handed down after the settlement agreement; that surely did not come as a surprise to Qualcomm.


    EDIT: To fix quote formatting issue.
    edited June 27 roundaboutnowFileMakerFellermuthuk_vanalingamwatto_cobra
  • Reply 10 of 14
    carnegiecarnegie Posts: 994member
    Sounds like Apple wants the opportunity to prove Qualcomm's patents are not original and therefore invalid. So that when 2025 comes around Qualcomm won't jump back on the lawsuit wagon. Sounds like a valid concern to me.
    That's correct. The point here is that the patents in question are set to outlive the settlement agreement. Apple wanted an agreement from Qualcomm that it wouldn't sue in the future based on these patents. In return Apple would have agreed, in effect, to drop its PTAB challenges to the patents' validity. Qualcomm wouldn't agree so Apple maintained the right to continue the challenges.

    It's a question that should probably be answered at some point: Basically, does a licensee have standing to challenge the validity of patents which will still be active, and based on which they might still be sued, after the expiration of an existing licensing agreement? (Or, under what circumstances do they have such standing?) That's why several parties field amicus briefs asking the Supreme Court to grant cert and consider the issue. It apparently just wasn't, in the eyes of enough justices, a big enough unresolved issue for the Court to take up the matter at this time.
    roundaboutnowFileMakerFellerwatto_cobra
  • Reply 11 of 14
    danoxdanox Posts: 1,042member
    FRAND is worthless in the west bottom line, except for China, East Asia, Russia, and the third world who will make or buy whatever they want when comes to a over the air radio.
    watto_cobra
  • Reply 12 of 14
    It's an interesting theoretical matter: should a patent be able to be challenged by anyone regardless of their relationship to the patent-holder? As a layman I believe the answer is yes, and as per the article Apple challenged the patents with the PTAB. But when the PTAB didn't arrive at the decision Apple expected, Apple wanted to challenge that decision. This ruling (again, as per the article) states that Apple doesn't have standing to issue that challenge, which as a matter of legal theory I find troubling. If the court had ruled that such a challenge would be a waste of PTAB and judicial resources - that is, it's a matter of practicality - then I wouldn't be bothered, but this seems like a precedent that impacts fairness and that has me concerned.
    watto_cobra
  • Reply 13 of 14
    thadecthadec Posts: 10member
    Apple's position in the Qualcomm fight never made sense. They were:

    1. It was the iPhone itself that gave Qualcomm's patents their value.

    Except that ... cell phones existed - and were a pretty big and growing industry - long before the iPhone. 

    2. Because Apple sold more phones than everybody else paying more than everyone else for the same IP was victimizing Apple for creating a superior product like the iPhone that sells so much. So Apple should only have to pay a fraction of what companies who sold far fewer phones do so they would pay no more than - say - Motorola for the same IP.

    Yeah, except that Samsung, pre-sanctions Huawei, Xiaomi and the Chinese BBK conglomerate have at times all sold about as many phones as Apple does, if not more, because iPhones only have about 10% to 20% market share. Also, this is different from how licensing IP has always worked, including Apple's own attempts to get other companies to pay licensing fees. In addition, the idea of "variable licensing rates" is a horrible one because it allows the very sort of sweetheart collusion deals that FRAND is meant to prohibit in the first place. 

    Their arguments were bonkers and they had no chance of succeeding on the merits. 
    beowulfschmidt
  • Reply 14 of 14
    mattinozmattinoz Posts: 1,870member
    thadec said:
    Apple's position in the Qualcomm fight never made sense. They were:

    1. It was the iPhone itself that gave Qualcomm's patents their value.

    Except that ... cell phones existed - and were a pretty big and growing industry - long before the iPhone. 

    2. Because Apple sold more phones than everybody else paying more than everyone else for the same IP was victimizing Apple for creating a superior product like the iPhone that sells so much. So Apple should only have to pay a fraction of what companies who sold far fewer phones do so they would pay no more than - say - Motorola for the same IP.

    Yeah, except that Samsung, pre-sanctions Huawei, Xiaomi and the Chinese BBK conglomerate have at times all sold about as many phones as Apple does, if not more, because iPhones only have about 10% to 20% market share. Also, this is different from how licensing IP has always worked, including Apple's own attempts to get other companies to pay licensing fees. In addition, the idea of "variable licensing rates" is a horrible one because it allows the very sort of sweetheart collusion deals that FRAND is meant to prohibit in the first place. 

    Their arguments were bonkers and they had no chance of succeeding on the merits. 
    I believe you are misrepresenting Apple's argument. 
    They didn't want the Patent fees based on the sales value of the device but on the functional value of the patent. (they up sell cellular for what $150 on a number devices) Ie iPhone pays same fee as a cheap burner phone. 

    Similarly a MacBookPro with M1Max 8Tb of SSD should be able to have cellular connection for the same fee if the function is provided with the same chips. Where Qualcom would want patent fees based on the full $6k of the devices retail price if that option was offered. 
    watto_cobra
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