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Why Apple Correctly Took Two Bites at a Qualcomm(?) Patent...

Gaston Kroub

Ah, Qualcomm v. Apple. Always giving us something to talk about. In the latest news, the PTAB rendered its institution decisions on two Apple challenges to a patent Qualcomm had acquired from Palm, and asserted against Apple in Qualcomm’s first patent salvo back in late November of 2017. Since everyone knows that this Qualcomm-Apple battle is a cage match, it should be no surprise that Apple filed two IPRs against the same patent. Smart choice, considering that Apple won institution on one IPR, and lost the second.

A quick word on the Qualcomm/Palm patent challenged by Apple. It is directed to responding to an incoming phone call by generating a text message response. More importantly, it represents yet another example of Qualcomm’s willingness to purchase patents from other self-styled smartphone pioneers to use against Apple. And in response, Apple has shown its own willingness to counter Qualcomm’s efforts on the merits, led by aggressive use of the PTAB as a check against any asserted patents.

In the first institution decision the PTAB addressed Qualcomm’s argument that Apple’s filing of two challenges against the same patent was improper. In fact, the PTAB said that there was no impropriety in that maneuver where: 1) there was little risk of redundant trials, 2) the petition word limits motivated the multiple filings, and 3) where the filings were done on or about the same day. Accordingly, there was no need to deny the petition as improper under the PTAB’s discretionary standards, and a decision on the merits of institution was reached.

In the second institution decision, the PTAB went ahead and applied its discretion to reject the petition. It found that Apple’s prior art and arguments were already considered by the PTO during examination, and there was no compelling argument offered by Apple why they should be considered again.

Ultimately, these decisions are just incremental steps in the long march toward resolution of the global Qualcomm-Apple dispute. At the same time, Apple was rewarded in some respect for aggressively filing two IPRs against a single patent, and future defendants would do well to consider doing the same to maximize their chances of success in front of the PTAB.

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