“This case presents the same question as Apple Inc. v. Qualcomm Inc., No. 21-746 (U.S.) (‘Apple I’), in which the Court recently called for the views of the Solicitor General.”
“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, just as in Apple I, Apple makes payments to respondent Qualcomm under a license agreement that covers a portfolio of patents. Applying its precedent in Apple I, the U.S. Court of Appeals for the Federal Circuit nevertheless held that Apple lacks Article III standing to challenge the validity of three 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 three 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.”
