On December 28, 2021, the Federal Circuit issued another decision addressing an appellant’s standing to appeal inter partes review (“IPR”) decisions from the PTAB. The patent community has seen several opinions over the last couple of years as the Federal Circuit continues to navigate the complicated waters of what is and is not sufficient to satisfy Article III standing.
As we previously reported, one recent example came in Apple Inc. v. Qualcomm Inc., No 20-1683 (Fed. Cir. Nov. 10, 2021) where the Federal Circuit dismissed the appeal for lack of standing.
Now, the Federal Circuit provided further guidance on the standing issue in its precedential opinion in Intel Corp. v. Qualcomm Inc., No. 2020-1664 (Fed. Cir. Dec. 28, 2021).
The appeal relates to Qualcomm’s U.S. Patent No. 8,229,043 (“the ’043 patent”) which is directed towards radio frequency communication devices. Specifically the patent is directed towards a mixer portion in the receiver front end of the device that improves the signal-to-noise ratio of a receiver.
Intel petitioned for IPR of claims 1-3, 6, 7, 17-19, and 21 of the ’043 patent, listing itself and its customer Apple, Inc. as the real parties-in-interest. The PTAB found that claims 1-3 and 7 were unpatentable and claims 6, 17-19 and 21 were patentable. The PTAB also granted in-part Qualcomm’s motion to amend and replaced claims 2, 3, and 7 of the ’043 patent with substitute claims 27, 28 and 31, respectively. Intel appealed the PTAB’s decision as to the patentability of the surviving original claims and the substitute claims. Qualcomm moved to dismiss the appeal for lack of standing.
Federal Circuit’s Analysis
As the Federal Circuit noted in its decision, to establish standing a party must show: (1) an “injury in fact” (2) “fairly traceable” to the defendant’s challenged conduct and (3) “likely to be redressed by a favorable judicial decision.” See Opinion (“Op.”) at 5. An “injury in fact” must be “concrete and particularized and actual or imminent, not conjectural or hypothetical.” Id. at 5 (quoting Spokeo, Inc. v. Robins, 578 U.S. 330, 339 (2016)). This requirement is generally met when an IPR petitioner “has engaged in, is engaging in, or will likely engage in activity that would give rise to a possible infringement suit.” Id. (quoting Grit Energy Sols., LLC v. Oren Techs., LLC, 957 F.3d 1309, 1319 (Fed. Cir. 2020)).
The Federal Circuit denied Qualcomm’s motion to dismiss for lack on standing on grounds that was a party. Intel manufactures and sells the SMARTi 5 RF transceiver chip and other RF transceiver chips that are used in smartphones. Qualcomm sued Apple for infringement in 2017, accusing the SMARTi 5 RF transceiver in Apple’s IPhone 7 modem of infringing the ’043 patent. The Federal Circuit found that because Qualcomm had mapped the claims of the ’043 patent to an Intel product in the previous lawsuit against Apple, Intel’s actions gave rise to an infringement lawsuit. The Federal Circuit held that it is of no consequence that the lawsuit was not actually filed against Intel because the standard does not require Intel to face a specific threat of infringement to establish standing.
The Federal Circuit further held that it does not matter that the prior lawsuit settled nearly two years ago because while a settlement can remove a party’s standing, Intel was not a party to Qualcomm and Apple’s settlement agreement. Also, Qualcomm had informed Intel that it was not offering a covenant not to sue on the patent. The fact that Intel continues to sell the relevant products and faces the risk that Qualcomm may file suit also weighed in favor of standing. Based on these facts, the Federal Circuit concluded that Intel’s injury-in-fact goes beyond mere conjecture and thus, Intel had standing to appeal the IPR decision.