U.S. urges Supreme Court to reject Apple appeal in Qualcomm patent fight

Apple logo is seen on the Apple store at The Marche Saint Germain in Paris, France July 15, 2020. REUTERS/Gonzalo Fuentes

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  • Apple says it should be able to challenge Qualcomm patents despite settlement
  • Government agrees with appeals court decision to toss the case

(Reuters) – The Justice Department on Tuesday urged the U.S. Supreme Court to deny a bid by Apple Inc to revive a patent fight with Qualcomm Inc over mobile technology.

The brief by U.S. Solicitor General Elizabeth Prelogar said a federal appeals court was correct to rule that Apple lacked standing to continue efforts to cancel two Qualcomm patents after reaching a global settlement with the chip maker.

A Justice Department spokesperson said Wednesday that the agency would let the brief speak for itself. Apple, Qualcomm and their attorneys did not immediately respond to requests for comment.

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Qualcomm sued Apple in 2017 in Southern California federal court for infringing the two patents. Apple challenged the patents’ validity at the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board, which ruled for Qualcomm.

The parties settled their litigation in 2019 before Apple appealed, signing an agreement worth billions of dollars that allowed Apple to continue using Qualcomm chips in iPhones. The settlement also contained a six-year license to tens of thousands of Qualcomm patents including the two at issue but allowed Apple’s PTAB proceedings to continue.

The U.S. Court of Appeals for the Federal Circuit said last year that Apple could not continue its appeal after settling the underlying dispute. It rejected Apple’s contentions that its royalty payments and risk of being sued again justified hearing the case.

Apple asked the Supreme Court in November to revive the dispute.

“Qualcomm has already asserted the patents against Apple and has not disclaimed its intention to do so again,” Apple said.

The U.S. government’s Tuesday brief said that while Apple could “eventually” be sued sometime after the license expires, it had not provided any evidence that it was likely to make or sell more products that could be accused of infringing.

The brief also said Qualcomm’s patents were not causing Apple any concrete harm. It noted that Apple did not say invalidating the patents would affect its agreement with Qualcomm or that the patents were keeping it from making any specific products.

Apple did not show that a win would “redress any injury to it–or, indeed, would have any real-world effect” on it at all, the brief said.

The case is Apple Inc v. Qualcomm Inc, U.S. Supreme Court, No. 21-746.

For Apple: Mark Fleming of Wilmer Cutler Pickering Hale & Dorr

For Qualcomm: Aaron Streett of Baker Botts

Read more:

Apple lacks standing to appeal Qualcomm PTAB win, Fed Circuit says

Apple loses bid for second bite at Qualcomm patents after license

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Blake Brittain

Thomson Reuters

Blake Brittain reports on intellectual property law, including patents, trademarks, copyrights and trade secrets. Reach him at blake.brittain@thomsonreuters.com

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