“In MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007), this Court held that, under Article III, a patent licensee may challenge the validity of a patent covered by a license agreement even where the licensee pays royalties that eliminate any imminent threat of suit. The Court recognized that royalty payments are coerced when, considering all the circumstances, the licensee makes those payments to avoid the threat of an infringement suit.”
“In this case, Apple makes payments to respondent Qualcomm Incorporated under a license agreement that covers a portfolio of patents. The U.S. Court of Appeals for the Federal Circuit nevertheless held that Apple lacks Article III standing to challenge the validity of two of those patents in appeals from inter partes reviews—a mechanism that Congress created precisely to facilitate challenges to questionable patents, including through appeal—because the license agreement covers multiple patents, such that invalidation of the two patents-in-suit would not by itself alter Apple’s payment obligations under the license agreement.”
“The question presented is:”
“Whether a licensee has Article III standing to challenge the validity of a patent covered by a license agreement that covers multiple patents.”
