IP Law Daily Apple handed partial ITC win in patent dispute with Qualcomm
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Wednesday, March 27, 2019

Apple handed partial ITC win in patent dispute with Qualcomm

By Cheryl Beise, J.D.

The International Trade Commission has denied Qualcomm’s request for an import ban of iPhones with Intel chips, finding that the sole remaining patent claim is invalid. However, in a second case, an ALJ’s initial finding is that Apple likely infringed one claim of a different Qualcomm patent.

In the latest development in the wide-ranging patent dispute between Qualcomm Incorporated and Apple Inc. over the smart phone manufacturer’s use of Intel chips in its electronic devices, the U.S. International Trade Commission (ITC) on March 26 announced its final ruling terminating one investigation into whether Apple Inc. violated Section 337 of the Tariff Act of 1930 by infringing Qualcomm patents (In re Certain Mobile Electronic Devices and Radio Frequency and Processing Components Thereof, March 26, 2019). The Commission found that the last asserted claim in the sole remaining patent-in-suit was invalid as obvious. Qualcomm said it will appeal the decision in light of a recent jury verdict finding that Apple infringed the same patent after Apple abandoned its invalidity defense. Meanwhile, in a second investigation launched by the ITC, Administrative Law Judge MaryJane McNamara issued her final initial determination that Apple infringed one valid claim of another patent asserted by Qualcomm (In re Certain Mobile Electronic Devices and Radio Frequency and Processing Components Thereof (II), March 26, 2019).

The Commission instituted the first investigation On August 14, 2017. Qualcomm originally alleged that Appel infringed six patents. Qualcomm dropped three patents; regarding the three remaining patents, Administrative Law Judge Thomas Pender issued a combined initial determination on violation issues and recommended determination on remedy, the public interest, and bonding on September 28, 2018. The initial determination found no infringement and hence no violation of Section 337 with respect to U.S. Patent Nos. 8,698,558 and 8,633,936. Judge Prender, however, did find that Apple infringed claim 31 of U.S. Patent No. 9,535,490 (the ’490 patent), issued January 3, 2017, and entitled "Power saving techniques in computing devices," but recommended that no limited exclusion order or cease-and-desist order be issued in this investigation due to their prospective effects on competitive conditions in the United States, national security, and other public interest concerns. The Commission decided to review the findings regarding infringement of the ’490 patent and whether claim 31 of the ‘490 patent is invalid as obvious, but otherwise adopted the ALJ’s conclusions. In its final determination, the Commission construed the term "hold" in claim 31 of the ‘490 patent to mean "to prevent data from traveling across the bus, or to store, buffer, or accumulate data" and concluded that Apple proved by clear and convincing evidence that claim 31 of the ‘490 patent is invalid as obvious over U.S. Patent No. 9,329,671 (Heinrich) in combination with U.S. Patent No. 8,160,000 (Balasubramanian).

In the second investigation, ALJ McNamera said she will be recommending a limited exclusion order barring importation of certain Apple devices. The full Commission is expected to review the determination and recommended remedy by late July. Judge McNamara found that claim 1 of Qualcomm’s U.S. Patent No. 8,063,674 (the ’674 patent) is valid and infringed by Apple. She also found that claim 8 was valid but not infringed. The ’674 patent improves power management in processor circuitry to reduce power consumption and improve battery life in mobile devices. The accused iPhone devices contain A10, A11, and A12 application processors. Regarding two other patents, Judge McNamara found that claim 4 of U.S. Patent No. 9,154,356 (the ’356 patent) was valid and not infringed and that claims 1 and 17 of U.S. Patent No. 9,473,336 (the ’336 patent) were invalid.

A federal jury in San Diego on March 15 found that Apple’s iPhone devices infringe three Qualcomm patents: claims 1 and 2 of U.S. Patent No. 8,838,949 (the ’949 patent); claim 31 of U.S. Patent No. 9,535,490 (the ’490 patent); and claims 19 and 27 of U.S. Patent No. 8,633,936 (the ’936 patent). The jury awarded Qualcomm $31 million in damages for infringement of the patents from July 6, 2017, the date the lawsuit was filed, through the end of the trial. According to a Qualcomm news release, the ’949 patent enables "flashless booting" which eliminates the cost and footprint of separate flash memory and allows a smartphone to connect to the internet quickly after being powered on; the ’936 patent enables high performance and rich visual graphics for games while increasing a smartphone’s battery life; and the ’490 patent enables the applications on a smartphone to get their data to and from the internet quickly and efficiently by acting as a smart "traffic cop" between the applications processor and the modem. Apple’s motion for judgment as a matter of law is still pending in the case.

The cases are Investigation Nos. 337-TA-1065 and 337-TA-1093.

Attorneys: S Alex Lasher (Quinn Emmanuel Urquhart & Sullivan LLP) for Qualcomm Incorporated. Indranil Mukerji (Fish & Richardson PC) for Apple Inc.

Companies: Qualcomm Incorporated; Apple Inc.

MainStory: TopStory Patent TechnologyInternet

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