United States Court of Appeals 

for the Federal Circuit ______________________

APPLE INC.,

Appellant

v.

QUALCOMM INCORPORATED,

Appellee

______________________

2020-1683, 2020-1763, 2020-1764, 2020-1827

______________________

Appeals from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in Nos. IPR2018-

01276, IPR2018-01281, IPR2018-01282, IPR2018-01460.

______________________

Decided: November 10, 2021

______________________

LAUREN ANN DEGNAN, Fish & Richardson P.C., Washington, DC, argued for appellant. Also represented by 

CHRISTOPHER DRYER; BRIANNA LEE CHAMBERLIN, ROBERT 

COURTNEY, Minneapolis, MN; OLIVER RICHARDS, San Diego, CA; LANCE E. WYATT, JR., Dallas, TX.

 JONATHAN S. FRANKLIN, Norton Rose Fulbright US 

LLP, Washington, DC, argued for appellee. Also represented by PETER B. SIEGAL; STEPHANIE DEBROW, EAGLE 

Case: 20-1683 Document: 87 Page: 1 Filed: 11/10/2021
2 APPLE INC. v. QUALCOMM INCORPORATED

HOWARD ROBINSON, Austin, TX; DANIEL LEVENTHAL,

RICHARD STEPHEN ZEMBEK, Houston, TX.

______________________

Before NEWMAN, PROST, and STOLL, Circuit Judges.

Opinion for the court filed by Circuit Judge PROST.

Dissenting opinion filed by Circuit Judge NEWMAN.

PROST, Circuit Judge.

Apple Inc. (“Apple”) appeals four decisions of the Patent Trial and Appeal Board (“Board”) determining that 

claims of patents owned by Qualcomm Inc. (“Qualcomm”) 

weren’t proven unpatentable. This is the second such dispute to reach us since these parties settled all their patentinfringement litigation worldwide and entered a global patent license agreement. In the first, we dismissed because 

Apple lacked Article III standing before this court. Apple 

Inc. v. Qualcomm Inc., 992 F.3d 1378, 1385 (Fed. Cir. 2021) 

(“Apple I”). Along the way, Apple I foresaw that the standing issue “impacts . . . other appeals.” Id. at 1382. Confronted here with identical operative facts, we do no more 

than follow in the wake of Apple I. We dismiss.

BACKGROUND

I

We begin with a flashback to Apple I. First, Qualcomm 

accused Apple in the Southern District of California of infringing various patents. Id. at 1381. Next, Apple petitioned the Board for inter partes review (“IPR”) of those 

patents.1 Id. Then, in 2019, the parties settled all their 

patent-infringement litigation worldwide and entered a 

six-year global patent license agreement with a two-year 

extension option, resulting in dismissal of the infringement 

1 U.S. Patent Nos. 7,844,037 and 8,683,362.

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APPLE INC. v. QUALCOMM INCORPORATED 3

case with prejudice. Id. After the Board determined that 

Apple failed to prove various claims unpatentable, Apple 

appealed and Qualcomm challenged Apple’s standing. Id.

Apple responded with three theories. First, Apple asserted standing under MedImmune, Inc. v. Genentech, Inc., 

549 U.S. 118 (2007), highlighting its “ongoing payment obligations that are a condition for certain rights in the license agreement.” Apple I, 992 F.3d at 1383. But the 

Apple I court saw in this argument a “fatal” failure of proof: 

Apple “nowhere argue[d] or provide[d] evidence that the 

validity of any single patent . . . would affect its ongoing 

payment obligations,” nor “identif[ied] any contractual dispute . . . that relates to, or could be resolved through a validity determination of, the patents at issue.” Id.

at 1383–84. Second, Apple relied on “the threat that [it] 

will be sued for infringing . . . after the expiration of the 

license agreement.” Id. at 1383. Once again, Apple I noted 

“deficiencies in [Apple’s] evidence”—for example, that Apple submitted “the sparsest of declarations,” which didn’t

“even mention the patents at issue” or “set forth any plans 

to engage in conduct after the expiration of the license 

agreement that might lead to an infringement suit.” Id.

at 1384. For this and other reasons, Apple I also rejected 

Apple’s third theory, that 35 U.S.C. § 315(e) would likely 

estop it from challenging these patents in the future. Id.

at 1385 (rejecting “invocation of the estoppel provision as a 

sufficient basis for standing” (quoting AVX Corp. v. Presidio Components, Inc., 923 F.3d 1357, 1362–63 (Fed. Cir. 

2019))). Consequently, Apple I dismissed Apple’s appeal 

for lack of standing.

II

We turn now to these consolidated appeals. As with 

the Apple I patents, Qualcomm accused Apple in the 

Southern District of California of infringing the patents at 

issue here. And, like in Apple I, Apple petitioned the Board 

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4 APPLE INC. v. QUALCOMM INCORPORATED

to review those patents.2 Then came the settlement and 

license agreement, resulting in dismissal of the district 

court action with prejudice. After that, the Board issued 

final written decisions concluding (like in Apple I) that Apple hadn’t proven various claims unpatentable. Apple appealed, Qualcomm moved to dismiss for lack of standing, 

and Apple filed an opposition supported by the exact same 

declarations it submitted in Apple I. We denied Qualcomm’s motion and directed the parties to address standing in their briefs.

Apple I issued when merits briefing across these appeals was complete except for one reply brief. In that brief,

Apple acknowledged that we are “bound by the specific 

holdings of the prior panel.” Reply Br. 26.3 Although Apple 

said it “presented additional arguments” that “the prior 

panel decision did not address,” the only such argument it 

identified was a request (in that last brief) that we vacate 

the Board’s underlying decisions if we dismiss for lack of 

jurisdiction. Reply Br. 26. Qualcomm, for its part, raised 

Apple I in a supplemental authority letter—asking us to 

“summarily dismiss . . . without argument” because Apple I

was “based on identical facts” and “rejected the same arguments” made here. Citation of Suppl. Authority at 1–2 

(April 16, 2021), ECF No. 49. Apple didn’t respond.

After the en banc court denied rehearing in Apple I, 

Qualcomm submitted another supplemental authority letter repeating its request. Citation of Suppl. Authority at 1 

(July 21, 2021), ECF No. 65. This time, Apple responded: 

“Although Apple continues to disagree with [Apple I], in 

light of that decision and the . . . order denying Apple’s 

2 U.S. Patent Nos. 9,024,418 (subject of IPR2018-

01460), 8,768,865 (subject of IPR2018-01281 and IPR2018-

01282), and 8,971,861 (subject of IPR2018-01276).

3 For simplicity, all citations to the appellate record 

are to No. 20-1827.

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APPLE INC. v. QUALCOMM INCORPORATED 5

petition for rehearing en banc, Apple believes that the present appeal can be resolved on the briefs without the need 

for oral argument.” Resp. to Citation of Suppl. Authority 

at 1 (July 23, 2021), ECF No. 66 (“Appellant’s 28(j) Response”). Apple then asked us to “vacate the current oral 

argument and resolve the appeal without argument” as we 

“deem[] appropriate.” Appellant’s 28(j) Response at 1. 

Shortly thereafter, the parties filed a joint motion to “vacate oral argument.” Joint Mot. at 1 (July 27, 2021), ECF 

No. 67 (capitalization normalized). We instead held a consolidated oral argument. There, Apple reiterated its disagreement with Apple I but acknowledged that the 

operative facts in this case were “the same.” Oral Arg. 

at 6:40–43, 38:30–58.4

DISCUSSION

The Constitution limits federal judicial power to deciding “Cases” or “Controversies.” U.S. CONST. art. III, § 2. 

Constitutional standing doctrine, which “limits the category of litigants empowered to maintain a lawsuit in federal court,” flows from this requirement. Spokeo, Inc. v.

Robins, 578 U.S. 330, 338 (2016). To establish standing, 

the party invoking federal jurisdiction must demonstrate 

(1) an “injury in fact” that is (2) “fairly traceable” to the defendant’s challenged conduct and is (3) “likely to be redressed by a favorable judicial decision.” Id. That’s the 

“irreducible constitutional minimum.” Id. (quoting Lujan 

v. Defs. of Wildlife, 504 U.S. 555, 560 (1992)).

Article III standing “is not necessarily a requirement 

to appear before an administrative agency.” Consumer 

Watchdog v. Wis. Alumni Rsch. Found., 753 F.3d 1258, 

1261 (Fed. Cir. 2014). IPR petitioners, for example, “may 

lack constitutional standing.” Cuozzo Speed Techs., LLC v.

4 https://oralarguments.cafc.uscourts.gov/default.aspx?fl=20-1827_08022021.mp3.

Case: 20-1683 Document: 87 Page: 5 Filed: 11/10/2021
6 APPLE INC. v. QUALCOMM INCORPORATED

Lee, 136 S. Ct. 2131, 2143–44 (2016) (first citing 35 U.S.C. 

§ 311(a); and then citing Consumer Watchdog, 753 F.3d 

at 1261–62). But the standing requirement “‘kicks in’” 

when “a party seeks review in a federal court.” Consumer 

Watchdog, 753 F.3d at 1261 (quoting Sierra Club v. EPA, 

292 F.3d 895, 899 (D.C. Cir. 2002)). Indeed, the “requirement of injury in fact is a hard floor of Article III jurisdiction that cannot be removed by statute.” Id. (quoting 

Summers v. Earth Island Inst., 555 U.S. 488, 497 (2009)). 

Such injury must be “concrete and particularized and actual or imminent, not conjectural or hypothetical.” Spokeo, 

578 U.S. at 339 (cleaned up). For example, it’s generally 

enough for an IPR petitioner to show that “it has engaged 

in, is engaging in, or will likely engage in ‘activity that 

would give rise to a possible infringement suit.’” Grit Energy Sols., LLC v. Oren Techs., LLC, 957 F.3d 1309, 1319 

(Fed. Cir. 2020) (quoting Consumer Watchdog, 753 F.3d 

at 1262).

I

We do not write on a blank slate in assessing Apple’s 

standing here. Rather, as presaged above, the writing is 

already on the wall. As Apple admits, “the operative facts 

are the same” here as in Apple I. Oral Arg. at 6:40–43. In 

both cases Qualcomm sued Apple for patent infringement, 

Apple petitioned for IPR, the parties settled and licensed, 

Apple failed to prove certain claims unpatentable at the 

Board, and Apple appealed. Even Apple’s declarations in 

support of standing are the same. True, the patents are 

different. But that’s irrelevant because the settlement and 

license agreement cover both sets of patents. The cases are 

on all fours.

Nonetheless, Apple raises a “nuance” that it says Apple I didn’t “specifically address[].” Oral Arg. at 6:35–39. 

In its view, Apple I “did not explain why the threat of liability, if Apple ceases the ongoing payment and the agreement is terminated, is not a sufficient injury to support 

Case: 20-1683 Document: 87 Page: 6 Filed: 11/10/2021
APPLE INC. v. QUALCOMM INCORPORATED 7

standing.” Oral Arg. at 5:00–40. But we’re unconvinced 

that this “nuance” allows us to turn back the clock on Apple I. “Panel opinions are, of course, opinions of the court 

and may only be changed by the court sitting en banc.” 

Robert Bosch, LLC v. Pylon Mfg. Corp., 719 F.3d 1305, 1316 

(Fed. Cir. 2013) (en banc). As a panel, we’re bound by stare 

decisis. We can’t defy Apple I by dealing differently with 

its double. And as Apple acknowledges, this “nuance” was 

at the heart of its denied en banc petition in Apple I. Oral 

Arg. at 5:40–6:18. Per Apple I, therefore, we dismiss for 

lack of standing.

II

Next we consider Apple’s request that, if we lack jurisdiction, we should vacate the Board’s decisions “to eliminate any doubt about the applicability of estoppel.” Reply 

Br. 25–26. In support, Apple cites United States v. Munsingwear, Inc., which directs courts to vacate the underlying decision in certain appeals that have become moot 

during their pendency, “clear[ing] the path for future relitigation.” 340 U.S. 36, 40 (1950).5 We see no good reason 

why, in view of the settlement and our directive to address 

standing in the merits briefs, Apple made this request only 

in its last-filed reply brief and at oral argument instead of 

in its opening brief.

At any rate, the request is misplaced. Munsingwear

concerns mootness, not standing. To be sure, the doctrines 

together require that “[a]t all stages of litigation, a plaintiff 

must maintain a personal interest in the dispute.” Uzuegbunam v. Preczewski, 141 S. Ct. 792, 796 (2021). But they 

are distinct. “The doctrine of standing generally assesses 

whether that interest exists at the outset, while the 

5 Munsingwear is “at least equally applicable to unreviewed administrative orders.” A.L. Mechling Barge 

Lines, Inc. v. United States, 368 U.S. 324, 329 (1961).

Case: 20-1683 Document: 87 Page: 7 Filed: 11/10/2021
8 APPLE INC. v. QUALCOMM INCORPORATED

doctrine of mootness considers whether it exists throughout the proceedings.” Id. Because Apple’s injury disappeared before it invoked our jurisdiction, Apple’s problem 

is lack of standing at the outset of the appeal, not mootness. 

As Apple recognizes, “Munsingwear-type vacatur arises 

where a case has become moot while the case is on appeal.” 

Oral Arg. at 1:22–40; see, e.g., Gould v. Control Laser Corp., 

866 F.2d 1391, 1395 (Fed. Cir. 1989) (explaining that Munsingwear did not apply where a settlement and consent 

judgment entered before appeal “foreclosed this court from 

obtaining jurisdiction”). Apple asks us to “extend that approach to the facts of this case,” which it believes “include 

an element of mootness.” Oral Arg. at 1:22–40. That’s an 

invitation to “confuse[] mootness with standing.” Friends 

of the Earth, Inc. v. Laidlaw Env’t Servs. (TOC), Inc., 

528 U.S. 167, 189 (2000). We decline it.

And even if this could be framed as mootness, vacatur 

would still be inappropriate because the jurisdiction-destroying event is a settlement Apple voluntarily entered. 

The decision whether to vacate hinges on the “conditions 

which have caused the case to become moot,” especially 

“whether the party seeking relief from the judgment below 

caused the mootness by voluntary action.” U.S. Bancorp 

Mortg. Co. v. Bonner Mall P’ship, 513 U.S. 18, 24 (1994) 

(cleaned up). To one side are cases in which an appellant, 

“frustrated by the vagaries of circumstance” or the “unilateral action” of the appellee, “ought not in fairness be forced 

to acquiesce in the judgment.” Id. at 25. To the other are 

cases like this one, in which “mootness results from settlement” such that “the losing party has voluntarily forfeited 

his legal remedy . . . thereby surrendering his claim to the 

equitable remedy of vacatur.” Id. The lines, therefore, are 

already drawn for us. “[M]ootness by reason of settlement 

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APPLE INC. v. QUALCOMM INCORPORATED 9

does not justify vacatur of a judgment under review.” Id.

at 29.6 We therefore deny Apple’s request.

CONCLUSION

We consistently dismiss IPR appeals if the petitioner 

lacks standing. E.g., Phigenix, Inc. v. Immunogen, Inc., 

845 F.3d 1168, 1176 (Fed. Cir. 2017); JTEKT Corp. v. GKN 

Auto. LTD., 898 F.3d 1217, 1221 (Fed. Cir. 2018); AVX, 

923 F.3d at 1367; Gen. Elec. Co. v. United Techs. Corp., 

928 F.3d 1349, 1355 (Fed. Cir. 2019); Argentum Pharms. 

LLC v. Novartis Pharms. Corp., 956 F.3d 1374, 1378 

(Fed. Cir. 2020). More than that, we have a case on point 

here: Apple I. We therefore end where we began. Apple I

controls. We have considered Apple’s remaining arguments but find them unpersuasive. Because Apple lacks 

Article III standing, we dismiss for lack of jurisdiction.

DISMISSED

6 For the first time at oral argument, Apple relied on 

Alvarez v. Smith, 558 U.S. 87, 94–97 (2009) and American 

Family Life Assurance Co. of Columbus v. FCC, 129 F.3d 

625, 630 (D.C. Cir. 1997), both of which granted vacatur 

under Munsingwear. But those cases expressly distinguished the rule of Bancorp because it is triggered by voluntary settlement—which wasn’t the circumstance in 

those cases but is precisely Apple’s circumstance here. Our 

conclusion, therefore, is unchanged.

Case: 20-1683 Document: 87 Page: 9 Filed: 11/10/2021
United States Court of Appeals 

for the Federal Circuit ______________________

APPLE INC.,

Appellant

v.

QUALCOMM INCORPORATED,

Appellee

______________________

2020-1683, 2020-1763, 2020-1764, 2020-1827

______________________

Appeals from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in Nos. IPR2018-

01276, IPR2018-01281, IPR2018-01282, IPR2018-01460. 

______________________

NEWMAN, Circuit Judge, dissenting.

I respectfully dissent. The Federal Circuit is not divested of its statutory jurisdiction to receive appeals of decisions of the Patent Trial and Appeal Board when the 

parties to an inter partes review have entered into a license

agreement. Precedent is clear that a patent licensee may 

challenge the patent’s validity in federal court without loss 

of Article III standing due to the existence of a license.

In this case the license was for a term of six years, not 

for the life of the patents. All three patents1 of these

1 There are three patents and four inter partes review decisions on this consolidated appeal hearing.

Case: 20-1683 Document: 87 Page: 10 Filed: 11/10/2021
2 APPLE INC. v. QUALCOMM INCORPORATED

appeals have a longer life span, but Apple states (without 

contradiction) that Qualcomm refused Apple’s request for 

licenses for the life of the patents. Apple states that there 

is continuing controversy about validity of the licensed patents, and that denial of standing to appeal the PTAB decisions will subject Apple not only to continuing royalty 

obligations, but also to the risk of estoppel in any district 

court proceedings after the license terminates.

Ignoring this continuing controversy, my colleagues on 

this panel hold that Apple has no standing to appeal these

PTAB decisions, despite the statutory authorization for appeal to the Federal Circuit, 35 U.S.C. § 329 and § 141, and 

despite the statutory estoppel of 35 U.S.C. § 325(e). My 

colleagues cite a prior opinion of the court on different patents, and hold that Apple’s entry into the six-year license 

eliminated Federal Circuit appellate jurisdiction based on 

Article III of the Constitution. See Apple Inc. v. Qualcomm 

Inc., 992 F.3d 1378 (Fed. Cir. 2021) (Apple I).

However, a licensee always has standing to challenge 

validity of the licensed patent; the America Invents Act did 

not abrogate that right, established in Lear, Inc. v. Adkins, 

395 U.S. 653 (1969) (overturning licensee estoppel). The 

AIA further assured that decisions of the PTAB are appealable to the Federal Circuit. There is no qualification as to 

whether the appellant is a licensee.

The parties hereto recognized in their license agreement that there were ongoing PTAB proceedings that 

would proceed in conformity with the statute. Nonetheless, 

the panel majority now holds that Apple has no standing 

to appeal, and that the Federal Circuit has no jurisdiction,

because Apple is a licensee of these patents. Maj. Op. at 6–

7. The statutory provision for appeal is contrary:

35 U.S.C. § 141 – Appeal to Court of Appeals 

for the Federal Circuit.

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APPLE INC. v. QUALCOMM INCORPORATED 3

(c) Post-Grant and Inter Partes Reviews.— A party 

to an inter partes review or a post-grant review 

who is dissatisfied with the final written decision 

of the Patent Trial and Appeal Board under section 

318(a) or 328(a) (as the case may be) may appeal 

the Board’s decision only to the United States 

Court of Appeals for the Federal Circuit.

This right of appeal is integral to the AIA’s post-grant system for determinations of patent validity, for the decision

resolves certain validity issues and is binding in the district court and the International Trade Commission; the 

decision cannot be reviewed in a civil action or by the ITC. 

These consequences of themselves establish Article III

standing. See Amerigen Pharms. Ltd. v. UCB Pharma 

GmBH, 913 F.3d 1076, 1084 (Fed. Cir. 2019) (standing to 

appeal exists where invalidation of patent would allow petitioner “to launch its competing product substantially earlier than it otherwise could upon the patent’s expiration.”); 

the court stated that “‘where Congress has accorded a procedural right to a litigant, such as the right to appeal an 

administrative decision, certain requirements of standing—namely immediacy and redressability, as well as prudential aspects that are not part of Article III—may be 

relaxed.’” Id. at 1082 n.11 (quoting Consumer Watchdog v. 

Wis. Alumni Rsch. Found., 753 F.3d 1258, 1261 (Fed. Cir. 

2014)).

Here, “Congress has accorded a procedural right . . . to 

appeal,” id., assured in 35 U.S.C. § 141. My colleagues’

contrary ruling contravenes the statute. I respectfully dissent.

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4 APPLE INC. v. QUALCOMM INCORPORATED

DISCUSSION

I

The controversy between Apple and Qualcomm is not 

eliminated by the license grant

Qualcomm argues that there is no Article III controversy because it is “speculative” whether Apple might be 

infringing these patents when the license expires in 2025. 

Each of the three patents subject of this appeal is for a different invention, for which Apple products were charged 

with infringement in district court proceedings. For each 

patent, Apple then challenged validity in the PTAB based 

on different combinations of prior art, and each patent received a different analysis and decision. See [1] Appeal 

Case No. 20-1683 (upholding all claims of Patent No. 

8,971,861); [2] Case No. 20-1763 (upholding claims 4 and 

23 but invalidating claims 1–3, 5, 6, 8–22, 24, 25, 27–30, 

46–49, and 51–53 of Patent No. 8,718,865); [3] Case No. 2-

1765 (upholding claims 4, 5, 23, 24, and 48 of Patent No. 

8,168,865); and [4] Case No. 20-1827 (upholding claims 1, 

2, 4, 5, 8, 12, 13, 15–19, and 20, but invalidating claims 3, 

9, 10, and 14 of Patent No. 9,024,418).2

Each of these appeals presents different issues and arguments and different technologic aspects of the devices 

that Qualcomm charged with infringement, in a complaint 

filed in the Southern District of California in 2017. 

2 The ’861 patent relates to a method, system and 

apparatus for monitoring the user’s physiological state; 

Qualcomm accused the Apple Watch and Apple iPhone of 

infringing this patent. The ’865 patent relates to machine 

learning to correlate certain states of a mobile device; Qualcomm accused Apple’s iPhone and iPad of infringing this 

patent. The ’418 patent relates to certain characteristics of 

cells in circuitry; Qualcomm accused Apple’s iPhone of infringing this patent.

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APPLE INC. v. QUALCOMM INCORPORATED 5

Qualcomm Inc. v. Apple Inc., 3-17-CV-02402-WQH-MDD

(S.D. Cal. Nov. 29, 2017). Qualcomm focused primarily on

the Apple iPhone and the Apple Watch. The license agreement terminated the litigation, but the agreement recognized the ongoing PTAB proceedings, and recited that the 

inter partes reviews would continue.

Apple reasonably states that the accused products are 

likely to continue to be in commerce when the license expires in 2025, noting that U.S. Patent No. 8,971,861, for 

example, does not expire until 2031. Precedent recognizes

that such concerns provide standing. See Medimmune Inc. 

v. Genentech, Inc., 549 U.S. 118, 137 (2007) (patent licensee 

has standing to challenge validity of licensed patents, without cancelling the license or breaching the license terms). 

In Already, LLC v. Nike, Inc., 568 U.S. 85 (2013), the Court 

observed that when litigation is settled between the parties 

to an infringement suit, the test for Article III controversy 

is whether the plaintiff “‘could not reasonably be expected’

to resume its enforcement efforts.” Id. at 92 (quoting 

Friends of the Earth, Inc. v. Laidlaw Env. Servs. (TOC), 

Inc., 528 U.S. 167, 190 (2000)). In Already v. Nike, the settlement provided a perpetual release for Nike and its customers, and on that ground was held to end the 

controversy; in contrast, here Qualcomm refused the requested license for the life of the patents.

The Court in Lear v. Adkins, supra, established that a 

licensee has standing to challenge the patents to which it 

is licensed, without the need to terminate or breach the license. The Federal Circuit has faithfully implemented this 

rule; see, e.g., Adidas AG v. Nike, Inc., 963 F.3d 1355, 1357 

(Fed. Cir. 2020), cert. denied, 141 S. Ct. 1376 (2021) (“We 

determined that the patent owner’s refusal to grant appellant a covenant not to sue further confirmed that appellant’s risk of injury was not ‘conjectural’ or ‘hypothetical’”) 

(citing E.I. DuPont de Nemours & Co. v. Synvina C.V., 904 

F.3d 996, 1004–05 (Fed. Cir. 2018)); JTEKT Corp. v. GKN 

Auto. LTD., 898 F.3d 1217, 1220 (Fed. Cir. 2018) (the 

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6 APPLE INC. v. QUALCOMM INCORPORATED

reasonable likelihood of future controversy sufficed to satisfy Article III, although the potential infringer “has no 

product on the market at the present time [this] does not 

preclude Article III standing, either in IPRs or in declaratory judgment actions.”); Phigenix, Inc. v. Immunogen, Inc., 

845 F.3d 1168, 1173 (Fed. Cir. 2017) (it suffices under Article III if the challenger is “an actual or prospective licensee of the patent . . . .”). In Powertech Technology Inc. v. 

Tessera, Inc., 660 F.3d 1301 (Fed. Cir. 2011) we explained:

[Patent owner] appears to maintain that there can 

be no Article III controversy as long as [licensee] 

complies with all the terms of the license agreement, including the payment of royalties. In essence, [patent owner’s] argument is that [licensee] 

must breach its license before it can challenge the 

validity of the underlying patent. This contention, 

however, is contrary to the Supreme Court’s decision in MedImmune, in which the Court held that 

a licensee did not need to repudiate a license agreement by refusing to pay royalties in order to have 

standing to declare a patent invalid, unenforceable, 

or not infringed. . . .

660 F.3d at 1308. See Baseload Energy, Inc. v. Roberts, 619 

F.3d 1357, 1364 n.5 (Fed. Cir. 2010) (“[T]he license provision of the Settlement Agreement did not bar an invalidity 

challenge. In both Lear and in MedImmune . . . the Supreme Court held that a licensee under such an agreement 

may challenge the validity of the patent.”); Prasco, LLC v. 

Medicis Pharm. Corp., 537 F.3d 1329, 1339 (Fed. Cir. 2008)

(patentee can cause an injury by, inter alia, “demanding 

the right to royalty payments . . . .”).

Appeals from PTAB decisions are subject to this extensive precedent. In Altaire Pharmaceuticals, Inc. v. Paragon 

Bioteck, Inc., 889 F.3d 1274, 1282 (Fed. Cir. 2018), remand 

order modified by stipulation, 738 F. App’x 1017 (Fed. Cir. 

2018), these principles were applied to PTAB appeals. The 

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APPLE INC. v. QUALCOMM INCORPORATED 7

court ruled that when a future infringement suit is reasonably likely, the likelihood of such action is of sufficient “immediacy” to support standing to appeal the PTAB decision. 

889 F.3d at 1282.

On extensive precedent, it is apparent that a patent licensee has standing to challenge validity of the patents to 

which it is licensed, including challenge in federal court on 

appeal from PTO decisions.

Qualcomm argues that because Apple’s license is to 

Qualcomm’s entire portfolio, Apple’s challenge to a few patents would not relieve Apple of its payment obligation, and 

thus Apple does not have standing as to these few patents. 

Apple points out that its concern is with the patents here 

on appeal, not a portfolio of patents for which no infringement charge has been made. Precedent has considered this 

argument; see, e.g., Apotex, Inc. v. Daiichi Sankyo, Inc., 781 

F.3d 1356, 1364–65 (Fed. Cir. 2015) (a licensee has standing to challenge validity even though other barriers to commercial activity remain in place); Arkema Inc. v. Honeywell 

Int’l, Inc., 706 F.3d 1351, 1358 (Fed. Cir. 2013) (patent 

owner’s refusal to offer a covenant not to sue “suggests that 

there is an active and substantial controversy between the 

parties regarding their legal rights with respect to those 

patents”). As in Arkema, here Qualcomm refused to license 

Apple for the life of these patents.

The only area in which standing to appeal has occasionally been rejected are cases in which the challenger has no 

direct or economic interest in the outcome of the appeal. In 

Consumer Watchdog, cited ante, this court found no standing to appeal a PTAB decision because the appellant was 

“a nonprofit consumer rights organization.” 753 F.3d at 

1263. The court observed that the appellant had “not alleged . . . that it is an actual or prospective competitor . . . or licensee of the” patent-in-suit. Id. at 1260. 

Although the Supreme Court had observed in Sierra Club 

v. Morton, 405 U.S. 727, 734–35 (1972) that even a 

Case: 20-1683 Document: 87 Page: 16 Filed: 11/10/2021
8 APPLE INC. v. QUALCOMM INCORPORATED

“recreational” or “aesthetic” interest may suffice to establish standing, the Court has considered the particular 

facts; for example, in Lujan v. Defenders of Wildlife, 504 

U.S. 555 (1992), the Court held that the asserted injury of

being unable to view and study endangered species without 

concrete plans to do so was not sufficiently “actual or imminent” to establish constitutional standing. Id. at 563, 

565. Similarly in Summers v. Earth Island Institute, 555 

U.S. 488 (2009), where a member of the Institute “asserted, 

first, that he had suffered injury in the past from development on Forest Service land,” due to timber sales covered 

by the challenged regulations, the Court concluded: “That 

does not suffice [to establish standing] for several reasons: 

because it was not tied to application of the challenged regulations, because it does not identify any particular site, 

and because it relates to past injury rather than imminent 

future injury that is sought to be enjoined.” Id. at 495.3

The only relevance of these public interest cases to this 

appeal is that the panel majority and the Apple I court rely

on them to support its decision of lack of standing. In contrast with non-profit public-interest litigants, Apple’s injury is imminent and ongoing. In Apple’s words: “There 

can be no question, then, that Apple is suffering a concrete 

present harm by having to pay royalties to be free from a 

3 The Court did not foreclose public interest litigation, and in Defenders of Wildlife, Justice Stevens observed 

in concurrence that “we have no license to demean the importance of the interest that particular individuals may 

have in observing any species or its habitat, whether those 

individuals are motivated by esthetic enjoyment, an interest in professional research, or an economic interest in 

preservation of the species. Indeed, this Court has often 

held that injuries to such interests are sufficient to confer 

standing, and the Court reiterates that holding today.” 504 

U.S. at 582 (citation omitted).

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APPLE INC. v. QUALCOMM INCORPORATED 9

patent it believes to be invalid.” Case No. 20-1683, Apple 

Reply Br. 2. This of itself satisfies Article III; see, e.g.,

Sanofi-Aventis U.S., LLC v. Dr. Reddy’s Labs., Inc., 933 

F.3d 1367, 1374 (Fed. Cir. 2019) (“In some circumstances, 

patent claims may create a controversy sufficient for declaratory judgment jurisdiction even when there is no risk 

of infringement . . . .”).

In sum, the filing of infringement suits by Qualcomm, 

and the temporary license taken by Apple, support Apple’s 

standing to pursue these appeals, reinforced where, as here 

“Congress has accorded a procedural right to a litigant, 

such as a right to appeal an administrative decision . . . .” 

Amerigen Pharms., 913 F.3d at 1082 n.11.

II

The special statutory estoppel of PTAB decisions reinforces the right of appeal 

The statutory estoppel of post-grant decisions is integral to the America Invents Act’s purpose of expeditious 

and economical final resolution of certain validity issues:

35 U.S.C. § 325(e) – Estoppel.

(2) Civil actions and other proceedings.— The petitioner in a post-grant review of a claim in a patent 

under this chapter that results in a final written 

decision under section 328(a), . . . may not assert 

either in a civil action arising in whole or in part 

under section 1338 of title 28 or in a proceeding before the International Trade Commission under 

section 337 of the Tariff Act of 1930 that the claim 

is invalid on any ground that the petitioner raised 

or reasonably could have raised during that postgrant review.

This estoppel provision is a novel change from previous validity procedures. As stated in PPG Industries, Inc. v. 

Valspar Sourcing, Inc., 679 F. App’x 1002, 1005 (Fed. Cir. 

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10 APPLE INC. v. QUALCOMM INCORPORATED

2017), the appellant’s “stake is enhanced by the ‘estoppel 

provisions contained within the inter partes reexamination 

statute.’” (quoting Consumer Watchdog, 753 F.3d at 1262). 

It cannot have been the legislative intent that a PTAB decision would achieve estoppel in district court if appeal of 

that decision were barred. Rather, the statutory structure

includes appeal of the PTAB decisions to the Federal Circuit, as codified at 35 U.S.C. § 329 and § 141.

Apple was sued for infringement, leading to this sixyear license. This unresolved controversy of itself suffices 

to establish standing to challenge validity of the licensed 

patents, for Apple’s “risk of liability is not ‘conjectural’ or 

‘hypothetical.’” See Adidas AG v. Nike, Inc., 963 F.3d 1355, 

1357 (Fed. Cir. 2020), cert. denied, 141 S. Ct. 1376 (2021) 

(“In Dupont . . . [w]e determined that the patent owner’s 

refusal to grant appellant a covenant not to sue further 

confirmed that appellant’s risk of injury was not ‘conjectural’ or ‘hypothetical’”) (citing E.I. DuPont de Nemours & 

Co. v. Synvina C.V., 904 F.3d 996, 1005 (Fed. Cir. 2018)); 

Gen. Elec. Co. v. Raytheon Techs. Corp., 983 F.3d 1334, 

1342 (Fed. Cir. 2020) (finding standing where challenger’s 

“specific investment in continued development of a geared 

turbofan engine design, its avowed preference to offer this

design for sale, and its informal offer of this engine to [patentee] in an ongoing bidding process together establish 

that [challenger] will likely engage in the sale of this geared 

turbofan engine design to customers.”) (emphasis in original).

The estoppel provision of itself provides Apple with

standing to appeal the PTAB decisions, and provides this 

court with jurisdiction to receive the appeals. Constitutional considerations were recognized in the America Invents Act, and are reflected in the provisions for judicial 

review. In addition, there is a “strong presumption that 

Congress intends judicial review of administrative action.” 

Bowen v. Michigan Acad. of Fam. Physicians, 476 U.S. 667, 

670 (1986). See Smith v. Berryhill, 139 S. Ct. 1765, 1777

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APPLE INC. v. QUALCOMM INCORPORATED 11

(2019) (“[T]he burden for rebutting” the presumption of judicial review “is ‘heavy’. . .”) (quoting Mach Mining, LLC v. 

EEOC, 135 S. Ct. 1645, 1651 (2015)). Judicial review is 

part of Patent Office history, and is fundamental to the new 

procedures created by the America Invents Act:

35 U.S.C. § 329 – Appeal. A party dissatisfied 

with the final written decision of the Patent Trial 

and Appeal Board under section 328(a) may appeal 

the decision pursuant to sections 141 through 144. 

Any party to the post-grant review shall have the 

right to be a party to the appeal.

This statutory provision is not negated when the appellant

is also a licensee. The legislative record shows that appellate procedures for the AIA were considered; the Senate 

record refers to the direct appeal to the Federal Circuit as 

part of the new inter partes review process:

The bill also eliminates intermediate administrative appeals of inter partes proceedings to the 

BPAI, instead allowing parties to only appeal directly to the Federal Circuit. By reducing two levels of appeal to just one, this change will 

substantially accelerate the resolution of inter 

partes cases.

157 Cong. Rec. S1376 (daily ed. Mar. 8, 2011) (statement of 

Sen. Schumer). See also H.R. Rep. 112-98 pt. 1 at 47 (“Inter 

partes reviews will be conducted before a panel of three 

APJs. Decisions will be appealed directly to the Federal 

Circuit.”).

Federal Circuit review is an integral component of the 

new post-grant procedures. It does not violate the Constitution when the appellant is a licensee of the patent being 

reviewed.

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12 APPLE INC. v. QUALCOMM INCORPORATED

III

Vacatur of the PTAB decision is appropriate if appeal is deemed barred by the Constitution

The Court recently reviewed the status of PTAB decisions under the Appointments Clause, see United States v. 

Arthrex, Inc., 141 S. Ct. 1970 (2021), and concluded that 

PTAB decisions must be amenable to review by a principal 

agency officer, or the decisions must be vacated. On similar 

principles, if PTO decisions are denied the right of judicial 

review, they must be vacated.

The Court has approved vacatur in analogous circumstances of unreviewed agency action, see A.L. Mechling 

Barge Lines, Inc. v. United States, 368 U.S. 324, 329 (1961) 

(vacatur for mootness is “applicable to unreviewed administrative orders”); see also PNC Bank Nat’l Ass’n v. Secure 

Axcess, LLC, 138 S. Ct. 1982 (mem.) (2018) (the Court ordered vacatur of PTAB decision of invalidity as moot because patent owner dismissed its infringement suit with 

prejudice (citing United States v. Munsingwear, Inc., 340 

U.S. 36 (1950)).

The Federal Circuit has vacated PTAB decisions for 

various reasons; see, e.g. Valspar Sourcing, Inc. v. PPG Indus., Inc., 780 F. App’x 917, 921 (Fed. Cir. 2019) (vacating 

PTAB decision and rejecting the proposition that a party 

“‘should suffer the consequences’ of its choice to unilaterally moot the original appeal” by “leaving in place certain 

adverse determinations from the proceedings below”). The 

court explained that “Munsingwear and its progeny instruct us to prevent appellants from being forced to acquiesce in a judgment that they can no longer challenge on the 

merits. They further instruct us to protect all parties from 

the collateral effects of a case that is mooted before an appellate determination on the merits.” Id. Similarly here, 

Apple should not be subject to estoppel if it is prevented 

from challenging the PTAB decision on the merits.

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APPLE INC. v. QUALCOMM INCORPORATED 13

The panel majority proposes that Apple “forfeited” the 

right to appeal to the Federal Circuit and forfeited access 

to vacatur of the PTAB decision. Maj. Op. at 8. The record 

contains no action or inaction by Apple suggestive of forfeiture. To the contrary, these four cases are Apple’s statutory appeals from the PTAB decisions, and Munsingwear

instructs that parties should not be “forced to acquiesce in 

a judgment that they can no longer challenge on the merits.” Valspar, 780 F. App’x at 921 (citing Munsingwear, 340 

U.S. at 39–41). Apple duly filed these appeals of the 

PTAB’s decisions. If the appeals are now deemed barred, 

the PTAB decisions are appropriately vacated.

CONCLUSION

Apple has standing to appeal these PTAB decisions to 

the Federal Circuit, and the Federal Circuit has jurisdiction to receive and decide these appeals. If appeal is nonetheless denied, the PTAB decisions require vacatur. From 

my colleagues’ contrary rulings, I respectfully dissent.

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