September 28, 2021

Volume XI, Number 271

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September 28, 2021

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September 27, 2021

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No Standing on Appeal from PTAB Where Appellant Cannot Prove Injury in Fact

In Apple Inc. v. Qualcomm Inc., No. 2020-1642 (Fed. Cir. Apr. 7, 2021), the Federal Circuit dismissed for lack of standing Apple’s appeal from a final written decision in an IPR ruling.

Before Apple’s appeal, but following the dispute at the PTAB, the two parties reached a settlement in all litigations involving the patents at issue. The parties executed a six-year licensing agreement with respect to those patents. Apple maintained its appeal from the PTAB.

The Federal Circuit held that, although Article III standing is not required to appear before an administrative agency, an appeal from an agency’s final action to a federal court requires the appellant to show an injury in fact. The Federal Circuit found that there was insufficient evidence Apple suffered an injury in fact. In so doing, the Court held that the outcome of the IPR would not affect Apple’s payment obligations under the license. Additionally, determining whether Qualcomm would sue Apple for infringement of the patents after the license expires was too speculative. The Court further noted that Apple failed to show it will likely engage in activities that could give rise to a suit based on the patents after the license expires.

© 2021 Finnegan, Henderson, Farabow, Garrett & Dunner, LLPNational Law Review, Volume XI, Number 110
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About this Author

Law Clerk

Alexander (Zan) Newkirk’s practice encompasses patent litigation, prosecution, and client counseling in the chemical, pharmaceutical, and medical device areas. He has industry experience with pulmonary and nasal medical devices, drug formulation, and vaccine formulation development.

Zan’s litigation experience covers various aspects of trial preparation, including discovery and regular pre-trial activities. He has worked on ANDA (Abbreviated New Drug Application) litigation.

Prior to law school, Zan interned at Novavax, a vaccine development company, where he analyzed...

202 408 4107
Christina Ji-Hye Yang Patent Litigation Attorney Finnegan Law Firm Washington, DC
Associate

Christina Ji-Hye Yang focuses her practice on patent litigation and client counseling in the areas of biotechnology and pharmaceuticals, with particular emphasis on Abbreviated New Drug Application (ANDA) cases.

Christina is involved in all phases of litigation, including pre-litigation analysis, fact discovery, and expert discovery. She also has experience in Section 337 litigation at the International Trade Commission (ITC) and post-grant proceedings at the Patent Trials and Appeals Board (PTAB), including inter partes reviews (IPRs). Christina has also advised clients in...

202-408-4465
Esther H. Lim Patent Litigation Attorney Finnegan Law Firm Washington, DC
Partner

Esther Lim has twenty-five years of experience in patent litigation, portfolio management, licensing, and counseling. She has litigated extensively before federal district courts, the International Trade Commission (ITC), and the U.S. Court of Appeals for the Federal Circuit (CAFC) in complex matters involving a wide range of technologies from electrical to mechanical to pharmaceutical. Esther served as the founding managing partner of Finnegan’s Shanghai office. She is the past president of the D.C. Bar with 110,000 members.

Over two decades of diverse professional endeavors and...

202-408-4121
Elizabeth Ferrill Patent Attorney Finnegan Law Firm
Partner

Elizabeth Ferrill is an “undisputed expert on design patents” who is “always updated and enlightening others with her deep knowledge,” “very involved in the design bar,” and “gives her clients an outstanding service” as noted in Intellectual Asset Management Patent 1000. She focuses her practice on all aspects of design patents, including prosecution, counseling, post-grant, and litigation.

Elizabeth counsels clients who hold design patents as well as those accused of infringement. She has experience with design patents related to consumer and industrial products, medical...

202 408 4445
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