Fresh From the Bench: Latest Federal Circuit Court Cases
CASE OF THE WEEK
Wi-LAN Inc. v. Sharp Electronics Corporation, Appeal Nos. 2020-1041, -1043 (Fed. Cir. Apr. 6, 2021)
In this week’s Case of the Week, the Federal Circuit addressed issues of claim construction and various issues concerning evidence admissibility and sufficiency.
The patents at issue related to Wi-LAN’s claimed methods of “deinterlacing” (the ’654 patent), a process used to “display interlaced video on a noninterlaced monitor,” and a system intended to optimize the bit rate of combined audio and visual data streams (the ’250 patent).
Apple Inc. v. Qualcomm Inc., Appeal Nos. 2020-1561, -1642 (Fed. Cir. Apr. 7, 2021)
In this case, the Federal Circuit dismissed for lack of standing Apple’s appeals of inter partes review decisions upholding the validity of two Qualcomm patents, where following final written decisions in the IPRs, Apple and Qualcomm entered into a global settlement of all pending litigation worldwide. The settlement contained a six-year license including the patents at issue that was subject to continuing payment obligations by Apple, which Apple argued supported finding an injury sufficient to confer Article III standing for purposes of appeal.
As an initial matter, the Court observed that given the global settlement, Apple should have briefed the issue of standing in its opening brief at the risk of waiver. However, having granted Qualcomm’s motion to file a sur-reply on the issue and therefore finding no prejudice to appellee, the Court exercised its discretion to hear Apple’s arguments.
On the merits, the Federal Circuit held that because Apple had presented no evidence that the invalidation of these particular patents would affect its payment obligations under the global settlement agreement, those payments were insufficient to confer standing for appeal. Distinguishing the Supreme Court’s decision in MedImmune, Inc. v. Genentech, Inc., 529 U.S. 118, 120 (2007) (where declaratory judgment plaintiff paid patent royalties under protest, it was not required to breach the agreement before bringing suit to extinguish royalty obligations), the Court found that in this case, Apple’s arguments amounted to little more than buyer’s remorse over its voluntary agreement. The Federal Circuit also found Apple’s contentions that Qualcomm could sue upon expiration of the license term to be too speculative and remote to confer Article III standing, and re-affirmed its prior holdings that the estoppel effected by 35 U.S.C. § 315(e), without more, is also insufficient to create standing to appeal an adverse IPR decision.