by Dennis Crouch
A swarm of gnats (midges) can be annoying. Although each bug is almost too small to be seen or felt, 20,000+ of the critters buzzing around can cause some to panic or at least release a curse. I’d advise you to just act gnaturally. But imagine for a second that you are able to capture two of the creatures that were part of the swarm. Are you then able to pass judgment on those two captured individuals for the harm of the swarm? Will killing those two gnats provide any relief from the swarm? (I know you are thinking revenge, but that is gnot the kind of concrete and particularized relief I’m talking about.)
In Apple Inc. v. Qualcomm Inc., 992 F.3d 1378 (Fed. Cir. 2021), the Federal Circuit refused to pass judgment on the two without some evidence that they were the particular cause of any harm. OK, we’re really talking about patents, and Apple is seeking to cancel two patents out of the 20,000+ that it has licensed from Qualcomm. Id.
The Case: After some litigation, Apple eventually licensed 20,000+ Qualcomm patents in a six-year-deal.* Meanwhile, Apple also pursued inter partes review (IPR) of two of the licensed patents. US7844037 and US8683362. The PTAB granted the IPR petitions but eventually sided with Qualcomm–holding that the challenged claims had not been proven obvious. Apple then appealed, but the Federal Circuit dismissed the appeal for lack of standing. The court held that Apple had not shown any “injury-in-fact” associated with the continued existence of the two challenged patents.
The en banc petition focuses on the Supreme Court’s patent-licensee standing decision in MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007). In MedImmune, the Supreme Court rejected Federal Circuit precedent that a “licensee in good standing cannot establish an Article III case or controversy.” Although the facts of MedImmune are some what different, Apple argues that the case should be read broadly based upon the Supreme Court’s repeated promotion of patent challenges.
- Lear, Inc. v. Adkins, 395 U.S. 653 (1969) (abolishing doctrine of licensee estoppel)
- Blonder-Tongue Laboratories, Inc. v. U. of Illinois Found., 402 U.S. 313 (1971) (expanding issue preclusion against a patent previously determined invalid).
- Cardinal Chem. Co. v. Morton Intern., Inc., 508 U.S. 83 (1993) (holding that courts may retain jurisdiction over invalidity counterclaims even after a determination of noninfringement).
Apple correctly argues that the IPR situation has unique circumstances that push toward standing: (1) estoppel tied to unsuccessful IPR; and (2) statutory right to appeal. In the case, Unified Patents has filed a brief in support of en banc rehearing. And, the Federal Circuit has shown some interest by inviting a response from Qualcomm. That response is due June 9.
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The panel noted in its opinion (and especially in oral arguments) that case involved a lack of evidence regarding the injury-in-fact. That situation exists, in part, because the issue of standing was not addressed by the USPTO. Rather, Article III standing only applies once a case moves into Federal Court, and so here addressed for the first time by the appellate court. Usually the court has a nice tight record to work from, but no record exists for this issue. Perhaps the court should have held an evidentiary hearing in order to elucidate this injury-in-fact.
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* Note – most of the deal has been kept confidential.