Qualcomm Patent From Settled Apple Suits Nixed on Intel’s Appeal

A Qualcomm Inc. patent on smartphone technology that had been among several asserted against Apple Inc. in since-settled disputes in a California federal court and at a U.S. trade agency shouldn’t have been issued, an appeals court ruled Thursday, reversing two patent tribunal decisions that had upheld the patent.

The appeals were launched by Intel Corp., which had sold Apple the disputed technology used in certain generations of iPhones. Qualcomm and Apple settled the underlying cases, at the U.S. District Court for the Southern District of California and at the U.S. International Trade Commission, in 2019.

The Patent Trial and Appeal Board’s “final written decisions finding that a skilled artisan would not have been motivated to combine the asserted prior art to arrive at the claimed invention are contrary to law and unsupported by substantial evidence,” Judge Jimmie V. Reyna wrote in an opinion Thursday for a three-judge panel of the U.S. Court of Appeals for the Federal Circuit. “Under the correct legal standard, Intel met its burden,” he said.

The patent, issued in August 2012, covers a device and method for receiving wireless communications over multiple carrier signals. It would’ve expired in August 2032, Bloomberg Law estimates.

The patent was among five that were at issue in a suit Qualcomm filed in November 2017 in San Diego federal court against Apple. The case settled in April 2019. It also was one of three patents that were at issue in an ITC complaint Qualcomm filed against Apple a day after the district court complaint. That case settled in August 2019.

On Thursday, the Federal Circuit reversed two PTAB decisions that had upheld the patent after validity reviews the tribunal had instituted at Intel’s request. The panel found that Claims 1-8, 10-11, and 17-18 cover obvious inventions that didn’t merit a patent.

Intel had challenged the PTAB’s construction of the claim term “carrier aggregation” and its finding of no motivation to combine the asserted prior art. The court concluded that the PTAB “committed legal and factual error” in assessing such motivation, “even under the Board’s construction of ‘carrier aggregation.’”

Considering a skilled artisan’s “knowledge and creativity, an obviousness determination does not require prior art to expressly state a motivation for every obvious combination,” Reyna said. “Moreover, there is no requirement that a motivation to combine must be separately expressed in each prior art reference.”

Addressing Qualcomm’s contention that Intel lacked standing to appeal the PTAB’s decisions, the court found that “Intel has demonstrated a non-speculative risk of being sued by Qualcomm for infringement and therefore has standing to bring this appeal.” Reyna cited the Federal Circuit’s rulings in two prior cases, which the court based on “the fact that Qualcomm sued Apple Inc. for infringement of the patent at issue, and that a main component of the accused products identified in Qualcomm’s infringement contentions was manufactured by Intel.”

Judges Pauline Newman and Raymond T. Chen joined in the opinion.

Intel is represented by Wilmer Cutler Pickering Hale & Dorr LLP. Qualcomm is represented by Jones Day.

The cases are Intel Corp. v. Qualcomm Inc., Fed. Cir., No. 20-2092, opinion issued 3/24/22; and Intel Corp. v. Qualcomm Inc., Fed. Cir., No. 20-2093, opinion issued 3/24/22.