Apple loses in Qualcomm case. Issue of standing. Judge Newman dissents.

The outcome:

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 patentinfringement 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

Cosnumer Watchdog appears:

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 (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 (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, 136 S. Ct. 2131, 2143–44 (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 (2009)). Such injury must be “concrete and particularized and actual or imminent, not conjectural or hypothetical.” Spokeo, 578 U.S. at 339 (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).

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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, therefore, we dismiss for lack of standing.
Next we consider Apple’s request that, if we lack jurisdiction, we should vacate the Board’s decisions “to eliminate any doubt about the applicability of estoppel.” Reply Br. 25–26. In support, Apple cites United States v. Munsingwear, Inc., which directs courts to vacate the underlying decision in certain appeals that have become moot during their pendency, “clear[ing] the path for future relitigation.” 340 U.S. 36, 40 (1950).5 We see no good reason why, in view of the settlement and our directive to address standing in the merits briefs, Apple made this request only in its last-filed reply brief and at oral argument instead of in its opening brief


Judge Newman dissented

I respectfully dissent. The Federal Circuit is not divested of its statutory jurisdiction to receive appeals of decisions of the Patent Trial and Appeal Board when the parties to an inter partes review have entered into a license agreement. Precedent is clear that a patent licensee may challenge the patent’s validity in federal court without loss of Article III standing due to the existence of a license.

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This right of appeal is integral to the AIA’s post-grant system for determinations of patent validity, for the decision resolves certain validity issues and is binding in the district court and the International Trade Commission; the decision cannot be reviewed in a civil action or by the ITC. These consequences of themselves establish Article III standing. See Amerigen Pharms. Ltd. v. UCB Pharma GmBH, 913 F.3d 1076, 1084 (Fed. Cir. 2019) (standing to appeal exists where invalidation of patent would allow petitioner “to launch its competing product substantially earlier than it otherwise could upon the patent’s expiration.”); the court stated that “‘where Congress has accorded a procedural right to a litigant, such as the right to appeal an administrative decision, certain requirements of standing—namely immediacy and redressability, as well as prudential aspects that are not part of Article III—may be relaxed.’” Id. at 1082 n.11 (quoting Consumer Watchdog v. Wis. Alumni Rsch. Found., 753 F.3d 1258, 1261 (Fed. Cir. 2014)).

The estoppel issue

The statutory estoppel of post-grant decisions is integral to the America Invents Act’s purpose of expeditious and economical final resolution of certain validity issues: 35 U.S.C. § 325(e) – Estoppel. (2) Civil actions and other proceedings.— The petitioner in a post-grant review of a claim in a patent under this chapter that results in a final written decision under section 328(a), . . . may not assert either in a civil action arising in whole or in part under section 1338 of title 28 or in a proceeding before the International Trade Commission under section 337 of the Tariff Act of 1930 that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that postgrant review. This estoppel provision is a novel change from previous validity procedures. As stated in PPG Industries, Inc. v. Valspar Sourcing, Inc., 679 F. App’x 1002, 1005 (Fed. Cir. 2017), the appellant’s “stake is enhanced by the ‘estoppel provisions contained within the inter partes reexamination statute.’” (quoting Consumer Watchdog, 753 F.3d at 1262). It cannot have been the legislative intent that a PTAB decision would achieve estoppel in district court if appeal of that decision were barred. Rather, the statutory structure includes appeal of the PTAB decisions to the Federal Circuit, as codified at 35 U.S.C. § 329 and § 141. Apple was sued for infringement, leading to this sixyear license. This unresolved controversy of itself suffices to establish standing to challenge validity of the licensed patents, for Apple’s “risk of liability is not ‘conjectural’ or ‘hypothetical.’” See Adidas AG v. Nike, Inc., 963 F.3d 1355, 1357 (Fed. Cir. 2020), cert. denied, 141 S. Ct. 1376 (2021) (“In Dupont . . . [w]e determined that the patent owner’s refusal to grant appellant a covenant not to sue further confirmed that appellant’s risk of injury was not ‘conjectural’ or ‘hypothetical’”) (citing E.I. DuPont de Nemours & Co. v. Synvina C.V., 904 F.3d 996, 1005 (Fed. Cir. 2018)); Gen. Elec. Co. v. Raytheon Techs. Corp., 983 F.3d 1334, 1342 (Fed. Cir. 2020) (finding standing where challenger’s “specific investment in continued development of a geared turbofan engine design, its avowed preference to offer this design for sale, and its informal offer of this engine to [patentee] in an ongoing bidding process together establish that [challenger] will likely engage in the sale of this geared turbofan engine design to customers.”) (emphasis in original).