Intel Finds New Life in Tribunal Challenges To Qualcomm Patents

Intel Corp.'s disputes with Qualcomm Inc. over two patents on smartphone technology were revived by the Federal Circuit, which found Intel had standing to appeal its losses at an administrative tribunal.

Intel asked the Patent Trial and Appeal Board to review the patents after Qualcomm sued Apple Inc., an Intel customer, and alleged infringement. Qualcomm and Apple reached a global settlement in 2019, ending all cases between them.

The question of whether Intel had standing to appeal the board’s decisions was a central issue before the U.S. Court of Appeals for the Federal Circuit.

The court in April found Apple was barred from appealing PTAB decisions involving other Qualcomm patents. Without parallel litigation, the court said Apple couldn’t show a non-speculative injury it will face if the patents remain valid.

Qualcomm argued Intel similarly lacked standing to appeal. Unconvinced, the court said Qualcomm indicated in the Apple litigation its belief that Intel products infringe. Qualcomm hasn’t promised Intel it won’t sue, the appeals court said.

“Because Intel’s risks transcend mere conjecture or hypothesis, we conclude that Intel has standing,” the Federal Circuit wrote in a precedential opinion.

In a separate opinion, the appeals court said it didn’t matter that Intel doesn’t make all the components required by one of the patents’ claims. The component Intel does make is important and there was a possibility of infringement suits, the court said.

Standing Questions

The ability of certain patent challengers to appeal a PTAB loss has become a closely watched issue at the Federal Circuit.

Apple has brought the issue to the U.S. Supreme Court, and various amicus briefs have been filed in support of the iPhone maker. That includes one from architects of the law that created the PTAB, Sen. Patrick Leahy (D-Vt.) and Rep. Darrell Issa (R-Calif.)

The lawmakers have argued Federal Circuit rulings have curtailed some challengers’ rights to appellate review and threaten “to turn one of the Leahy-Smith America Invents Act’s major achievements into an empty shell.”

Intel appealed after the PTAB invalidated some, but not all, challenged claims in Qualcomm’s U.S. Patent No. 8,229,043. The board also allowed the chipmaker to add some new substitute claims. Separately, the PTAB upheld various claims that Intel challenged in Qualcomm’s U.S. Patent No. 8,838,949.

The Federal Circuit sent both cases back to the board. For the ‘043 patent, the court said the PTAB’s decision allowing the substitute claims lacked substantial evidence. It told the board to reevaluate whether the claims are obvious.

The court also said the PTAB needs to reconsider its interpretation of a particular term in the ‘949 patent. Additionally, the board should more fully analyze whether certain claims are indefinite and an obviousness analysis is possible, the court said.

Judge Sharon Prost, Judge Richard Taranto and Judge Todd Hughes sat on the Federal Circuit panel.

Intel is represented by WilmerHale. Qualcomm is represented by Norton Rose Fulbright US and Jones Day.

The cases are Intel Corp. v. Qualcomm Inc., Fed. Cir., No. 20-1828, 12/28/21 and Intel Corp. v. Qualcomm Inc., Fed. Cir., No. 20-1664, 12/28/21.