Fresh From the Bench: Latest Federal Circuit Court Cases

CASES OF THE WEEK

Apple Inc. v. Qualcomm Inc., Appeal Nos. 2020-1683, -1763, -1764, 1827 (Fed. Cir. Nov. 10, 2021)

Our Case of the Week reinforces a developing body of law concerning standing to appeal from an adverse PTAB decision in an IPR.  This is the second such decision arising from a global settlement between Apple and Qualcomm this year.   We wrote about the first case, in April this year, here.  As with that case, the Federal Circuit affirmed that Apple has no standing to appeal adverse IPR decisions.

Qualcomm sued Apple for infringement of a number of patents.  Apple filed petitions for IPR at the Patent Office.  In 2019, the parties settled their disputes pursuant to a six-year global patent license agreement with a two-year extension option.  That resulted in dismissal of the case with prejudice.  Ultimately, the PTAB found that Apple had failed to prove various claims unpatentable.

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By Nika Aldrich

ALSO THIS WEEK

ROHM Semiconductor USA, LLC v. MaxPower Semiconductor, Inc., Appeal No. 2021-1709 (Fed. Cir. Nov. 12, 2021)

In an appeal from the United States District Court for the Northern District of California, the Federal Circuit addressed whether the district court erred in holding that the parties agreed to arbitrate whether a patent dispute fit within the arbitrability clause in an agreement.  Applying Ninth Circuit law, the Federal Circuit affirmed the district court’s ruling, holding that the parties clearly and unmistakably delegated authority to the arbitrator to arbitrate arbitrability.  In doing so, the Federal Circuit re-affirmed the near universal principle that in contracts between sophisticated parties, incorporation of rules with a provision on the subject is normally sufficient “clear and unmistakable” evidence of the parties’ intent to delegate the question of arbitrability to an arbitrator.

A copy of the opinion can be found here.

By Mario Delegato

Edited by: Scott D. Eads and Nika Aldrich, Schwabe Williamson & Wyatt

Contributor: Mario Delegato