Apple Inc. v. Qualcomm Inc.

• Decision Date: 10 November 2021
• Docket Number: 2020-1683, 2020-1763, 2020-1764, 2020-1827
• Citation: 17 F.4th 1131
• Parties: APPLE INC., Appellant v. QUALCOMM INCORPORATED, Appellee
• Court: U.S. Court of Appeals — Federal Circuit

17 F.4th 1131

APPLE INC., Appellant

v.QUALCOMM INCORPORATED, Appellee

2020-1683, 2020-1763, 2020-1764, 2020-1827

United States Court of Appeals, Federal Circuit.

Decided: November 10, 2021

Lauren Ann Degnan, Fish & Richardson P.C., Washington, DC, argued for appellant. Also represented by Christopher Dryer; Brianna Lee Chamberlin, Robert Courtney, Minneapolis, MN; Oliver Richards, San Diego, CA; Lance E. Wyatt, JR., Dallas, TX.

Jonathan S. Franklin, Norton Rose Fulbright US LLP, Washington, DC, argued for appellee. Also represented by Peter B. Siegal ; Stephanie Debrow, Eagle Howard Robinson, Austin, TX; Daniel Leventhal, Richard Stephen Zembek, Houston, TX.

Before Newman, Prost, and Stoll, Circuit Judges.

Dissenting opinion filed by Circuit Judge Newman.

Prost, Circuit Judge.

Apple Inc. ("Apple") appeals four decisions of the Patent Trial and Appeal Board ("Board") determining that claims of patents owned by Qualcomm Inc. ("Qualcomm") weren't proven unpatentable. This is the second such dispute to reach us since these parties settled all their patent-infringement litigation worldwide and entered a global patent license agreement. In the first, we dismissed because Apple lacked Article III standing before this court. Apple Inc. v. Qualcomm Inc. , 992 F.3d 1378, 1385 (Fed. Cir. 2021) (" Apple I "). Along the way, Apple I foresaw that the standing issue "impacts ... other appeals." Id. at 1382. Confronted here with identical operative facts, we do no more than follow in the wake of Apple I. We dismiss.

BACKGROUND

I

We begin with a flashback to Apple I. First, Qualcomm accused Apple in the Southern District of California of infringing various patents. Id. at 1381. Next, Apple petitioned the Board for inter partes review ("IPR") of those patents.¹ Id. Then, in 2019, the parties settled all their patent-infringement litigation worldwide and entered a six-year global patent license agreement with a two-year extension option, resulting in dismissal of the infringement case with prejudice. Id. After the Board determined that Apple failed to prove various claims unpatentable, Apple appealed and Qualcomm challenged Apple's standing. Id.

Apple responded with three theories. First, Apple asserted standing under MedImmune, Inc. v. Genentech, Inc. , 549 U.S. 118, 127 S.Ct. 764, 166 L.Ed.2d 604 (2007), highlighting its "ongoing payment obligations that are a condition for certain rights in the license agreement." Apple I , 992 F.3d at 1383. But the Apple I court saw in this argument a "fatal" failure of proof: Apple "nowhere argue[d] or provide[d] evidence that the validity of any single patent ... would affect its ongoing payment obligations," nor "identif[ied] any contractual dispute ... that relates to, or could be resolved through a validity determination of, the patents at issue." Id. at 1383–84. Second, Apple relied on "the threat that [it] will be sued for infringing ... after the expiration of the license agreement." Id. at 1383. Once again, Apple I noted "deficiencies in [Apple's] evidence"—for example, that Apple submitted "the sparsest of declarations," which didn't "even mention the patents at issue" or "set forth any plans to engage in conduct after the expiration of the license agreement that might lead to an infringement suit." Id. at 1384. For this and other reasons, Apple I also rejected Apple's third theory, that 35 U.S.C. § 315(e) would likely estop it from challenging these patents in the future. Id. at 1385 (rejecting "invocation of the estoppel provision as a sufficient basis for standing" (quoting AVX Corp. v. Presidio Components, Inc. , 923 F.3d 1357, 1362–63 (Fed. Cir. 2019) )). Consequently, Apple I dismissed Apple's appeal for lack of standing.

II

We turn now to these consolidated appeals. As with the Apple I patents, Qualcomm accused Apple in the Southern District of California of infringing the patents at issue here. And, like in Apple I , Apple petitioned the Board to review those patents.² Then came the settlement and license agreement, resulting in dismissal of the district court action with prejudice. After that, the Board issued final written decisions concluding (like in Apple I ) that Apple hadn't proven various claims unpatentable. Apple appealed, Qualcomm moved to dismiss for lack of standing, and Apple filed an opposition supported by the exact same declarations it submitted in Apple I. We denied Qualcomm's motion and directed the parties to address standing in their briefs.

Apple I issued when merits briefing across these appeals was complete except for one reply brief. In that brief, Apple acknowledged that we are "bound by the specific holdings of the prior panel." Reply Br. 26.³ Although Apple said it "presented additional arguments" that "the prior panel decision did not address," the only such argument it identified was a request (in that last brief) that we vacate the Board's underlying decisions if we dismiss for lack of jurisdiction. Reply Br. 26. Qualcomm, for its part, raised Apple I in a supplemental authority letter—asking us to "summarily dismiss ... without argument" because Apple I was "based on identical facts" and "rejected the same arguments" made here. Citation of Suppl. Authority at 1–2 (April 16, 2021), ECF No. 49. Apple didn't respond.

After the en banc court denied rehearing in Apple I , Qualcomm submitted another supplemental authority letter repeating its request. Citation of Suppl. Authority at 1 (July 21, 2021), ECF No. 65. This time, Apple responded: "Although Apple continues to disagree with [ Apple I ], in light of that decision and the ... order denying Apple's petition for rehearing en banc, Apple believes that the present appeal can be resolved on the briefs without the need for oral argument." Resp. to Citation of Suppl. Authority at 1 (July 23, 2021), ECF No. 66 ("Appellant's 28(j) Response"). Apple then asked us to "vacate the current oral argument and resolve the appeal without argument" as we "deem[ ] appropriate." Appellant's 28(j) Response at 1. Shortly thereafter, the parties filed a joint motion to "vacate oral argument." Joint Mot. at 1 (July 27, 2021), ECF No. 67 (capitalization normalized). We instead held a consolidated oral argument. There, Apple reiterated its disagreement with Apple I but acknowledged that the operative facts in this case were "the same." Oral Arg. at 6:40–43, 38:30–58.⁴

DISCUSSION

The Constitution limits federal judicial power to deciding "Cases" or "Controversies." U.S. CONST . art. III, § 2. Constitutional standing doctrine, which "limits the category of litigants empowered to maintain a lawsuit in federal court," flows from this requirement. Spokeo, Inc. v. Robins , 578 U.S. 330, 338, 136 S.Ct. 1540, 194 L.Ed.2d 635 (2016). To establish standing, the party invoking federal jurisdiction must demonstrate (1) an "injury in fact" that is (2) "fairly traceable" to the defendant's challenged conduct and is (3) "likely to be redressed by a favorable judicial decision." Id. That's the "irreducible constitutional minimum." Id. (quoting Lujan v. Defs. of Wildlife , 504 U.S. 555, 560, 112 S.Ct. 2130, 119 L.Ed.2d 351 (1992) ).

Article III standing "is not necessarily a requirement to appear before an administrative agency." Consumer Watchdog v. Wis. Alumni Rsch. Found. , 753 F.3d 1258, 1261 (Fed. Cir. 2014). IPR petitioners, for example, "may lack constitutional standing." Cuozzo Speed Techs., LLC v. Lee , 579 U.S. 261, 136 S. Ct. 2131, 2143–44, 195 L.Ed.2d 423 (2016) (first citing 35 U.S.C. § 311(a) ; and then citing Consumer Watchdog , 753 F.3d at 1261–62 ). But the standing requirement " ‘kicks in’ " when "a party seeks review in a federal court." Consumer Watchdog , 753 F.3d at 1261 (quoting Sierra Club v. EPA , 292 F.3d 895, 899 (D.C. Cir. 2002) ). Indeed, the "requirement of injury in fact is a hard floor of Article III jurisdiction that cannot be removed by statute." Id. (quoting Summers v. Earth Island Inst. , 555 U.S. 488, 497, 129 S.Ct. 1142, 173 L.Ed.2d 1 (2009) ). Such injury must be "concrete and particularized and actual or imminent, not conjectural or hypothetical." Spokeo , 578 U.S. at 339, 136 S.Ct. 1540 (cleaned up). For example, it's generally enough for an IPR petitioner to show that "it has engaged in, is engaging in, or will likely engage in ‘activity that would give rise to a possible infringement suit.’ " Grit Energy Sols., LLC v. Oren Techs., LLC , 957 F.3d 1309, 1319 (Fed. Cir. 2020) (quoting Consumer Watchdog , 753 F.3d at 1262 ).

I

We do not write on a blank slate in assessing Apple's standing here. Rather, as presaged above, the writing is already on the wall. As Apple admits, "the operative facts are the same" here as in Apple I. Oral Arg. at 6:40–43. In both cases Qualcomm sued Apple for patent infringement, Apple petitioned for IPR, the parties settled and licensed, Apple failed to prove certain claims unpatentable at the Board, and Apple appealed. Even Apple's declarations in support of standing are the same. True, the patents are different. But that's irrelevant because the settlement and license agreement cover both sets of patents. The cases are on all fours.

Nonetheless, Apple raises a "nuance" that it says Apple I didn't "specifically address[ ]." Oral Arg. at 6:35–39. In its view, Apple I "did not explain why the threat of liability, if Apple ceases the ongoing payment and the agreement is terminated, is not a sufficient injury to support standing." Oral Arg. at 5:00–40. But we're unconvinced that this "nuance" allows us to turn back the clock on Apple I. "Panel opinions are, of course, opinions of the court and may only be changed by the court sitting en banc." Robert Bosch, LLC v. Pylon Mfg. Corp. , 719 F.3d 1305, 1316 (Fed. Cir. 2013) (en banc). As a panel, we're bound by stare decisis. We can't defy Apple I by dealing differently with its double. And as Apple acknowledges, this "nuance" was at the heart of its denied en banc petition in Apple I. Oral Arg. at 5:40–6:18. Per Apple I ,...