USPTO and EPO post-grant reviews: Intel is beating the living daylights out of Qualcomm's envelope tracker patent

There's only been bad news for Qualcomm's envelope tracker patent family this week. So bad in fact that it's impossible to understand why Qualcomm made a $1.5 billion deposit last month to enforce an injunction in Germany that lacks legitimacy and teeth at the same time.

On Tuesday, the United States District Court for the Southern District of California considered it a crystal-clear case that Qorvo's envelope tracker chip found in certain iPhone models doesn't infringe. That's why Judge Dana M. Sabraw entered summary judgment against Qualcomm's related infringement claim. There wasn't even a point in presenting an extremely far-fetched infringement theory to a jury. Previously, the ITC had held the patent non-infringed as well. In the combination of the ITC and San Diego (Qualcomm's hometown) rulings, there is every reason to assume that the German injunction is a monumental miscarriage of justice, and Qualcomm will likely lose some part of its $1.5 billion deposit if there's no settlement before Apple will be able to seek wrongful-enforcement damages.

Also on Tuesday, German website WinFuture.de scooped everyone by finding out from resellers that Apple will apparently have a workaround ready in a month's time. It's illustrative of the utter absurdity of the envelope tracker SNAFU that a workaround would have to be created, replacing a non-infringing (in all likelihood, given the two U.S. decisions) chip. Contrary to what some people on the Internet appear to think, it's not an admission. It's simply that, should WinFuture.de be right (which I tend to believe it is), any infringement allegations by Qualcomm against the modified variants of the iPhone 7 and iPhone 8 would require a whole new determination on the merits, while a contempt proceeding involving the previously adjudicated chipset could be decided against Apple if the court relied on its agnostic--by now, most likely counterfactual--infringement finding again. If the standard in a contempt proceeding required Qualcomm to prove an actual infringement, a workaround would most likely not be needed, but the court might favor the same approach once again and adopt Qualcomm's attorneys' fiction. As the saying goes, discretion is the better part of valor.

Yesterday--Wednesday--delivered the next round of bad news for that Qualcomm patent. Technically it's U.S.-only news, but due to major overlaps it also has important implications for an opposition proceeding before the European Patent Office, which will hold an opposition hearing on May 24 (chairman: Manuel Pavón Mayo; 1st examiner: Ali Hijazi; 2nd examiner: Thomas Agerbaek). The U.S. inter partes review no. IPR2018-01154 targeting claims 15-20 of the U.S. envelope tracker patent is most interesting in this regard as the claims and the prior art references are most similar to the issues before the EPO's opposition division.

The Patent Trial and Appeal Board (PTAB) of the United States Patent & Trademark Office (USPTO), which had previously instituted two inter partes reviews of the envelope tracker patent, yesterday granted two more petitions, resulting in a total of four IPRs targeting this patent, with each proceeding relating to a different set of claims. The following screenshot shows the status of Intel's four IPR petitions, all four of which have given rise to post-grant reviews by now (click on the image to enlarge; this post continues below the image):

In light of the Supreme Court's SAS ruling, which requires the PTAB to either review all challenged claims or none, the partitioning of Intel's validity attack on the envelope tracker patent makes the four decisions on institution even more meaningful. Otherwise, if a single petition had challenged all claims, the PTAB might have granted a review theoretically because of a single claim being reasonably likely to be invalidated. But since Intel's lawyers (from the Wilmer Hale firm) challenged four sets of claims separately, we now know that the USPTO sees a reasonable likelihood of invalidation for multiple claims, and probably even for all claims.

The petitions were all filed in late June, i.e., after the SAS decision, and Intel presumably sought to avoid a situation in which the PTAB would be scared away by a monolithic petition targeting all claims at once if there had been a strong case for invalidation with respect to maybe just one or two claims. But by now we know it was a non-issue. The patent has a huge validity problem.

Should a constitutional law professor (who happens to be the chairman of the board of directors of an organization that has been supporting Qualcomm for some time now) be right and the ITC actually has to conduct a retrial with respect to Qualcomm's first ITC complaint against Apple, the envelope tracker patent would be relitigated, but the likelihood of the ITC deeming the asserted claims invalid would be higher next time around.

Since there will be news from those IPRs sooner or later, I'd like to help everyone navigate the four IPRs by providing an overview of what prior art references are held against what claims in what proceeding:

IPR2018-01153 (claims 1-9) -- instituted on 01/16/19

Intel's petition (PDF)

Claim 1: obvious over Chu + Choi 2010 + Myers

Claim 2: obvious over Chu + Choi 2010 + Myers

Claim 3: obvious over Chu + Choi 2010 + Myers

Claim 4: obvious over Chu + Choi 2010 + Myers

Claim 5: obvious over Chu + Choi 2010 + Myers

Claim 6: obvious over Chu + Choi 2010 (if necessary, + Myers)

Claim 7: obvious over Chu + Choi 2010 + Myers

Claim 8: obvious over Chu + Choi 2010 (if necessary, + Myers)

Claim 9: obvious over Chu + Choi 2010 + Myers

IPR2018-01240 (claims 10&11) -- instituted on 02/06/19

Intel's petition (PDF)

Claim 10: obvious over Chu + Choi 2010 + Hanington

Claim 11: obvious over Chu + Choi 2010 + Hanington + Myers

IPR2018-01152 (claims 12-14) -- instituted on 01/16/19

Intel's petition (PDF)

Claim 12: anticipated by Chu

Claim 13: obvious over Chu + Choi 2010 (if necessary, + Myers)

Claim 14: anticipated by Chu, or obvious over Chu + Blanken

IPR2018-01154 (claims 15-20) -- instituted on 02/06/19 and most relevant to the European proceeding

Intel's petition (PDF)

Claim 15: anticipated by Kwak

Claim 16: obvious over Kwak

Claim 17: anticipated by Kwak

Claim 18: anticipated by Kwak

Claim 19: obvious over Kwak + Choi 2010

Claim 20: anticipated by Kwak

Before the EPO, Intel attacks the relevant European claims as being anticipated by a prior art reference named Hou, but also argues that they're obvious over Kwak + Kim, or alternatively over Stauth + Tanabe. Further reference is made in Intel's European opposition brief to prior art references named Midya, Lee, Wu, Mathe, Kim, Kang, and Chu.

Finally, here's Intel's European opposition brief (Appled raised the same issues and is represented by the same Samson & Partner patent attorneys):

Intel Opposition to EP27244... by on Scribd

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Qualcomm's German motion for contempt sanctions against Apple faces high legal hurdle while iPhone 7 and 8 remain widely available

On Thursday, January 31, the Munich 1 Regional Court had bad news for Qualcomm's eight patent suits (over four different patents from the same patent family) against Apple's Spotlight search. A few hours later, and a day after its most recent quarterly earnings call (a type of event around which Qualcomm likes to announce court filings), Qualcomm shared with a couple of news agencies a motion for contempt sanctions it brought against Apple in Munich. That contempt motion relates to a pair of injunctions granted to Qualcomm in December without an actual finding of infringement (announcement; impact assessment; defendant's dilemma). Qualcomm is angry because the iPhone 7 and 8 remain widely available in Germany (which, based on my online research, is still the case today).

All in all, there are now five types of legal proceeding pending in Germany with respect to the pair of injunctions ordered in December:

1. The appeals court (Oberlandesgericht München = Munich Higher Regional Court) confirmed in early January that Apple had appealed the injunctions.

2. The appeals court furthermore confirmed that Apple had brought a motion to stay enforcement (pending the appellate proceedings). At the time, Qualcomm had not yet responded to it. I'd be surprised if we didn't hear about a decision during this month of February, however.

3. Qualcomm obtained a preliminary injunction barring Apple from telling the media that the iPhone 7 and 8 remain available in Germany at more than 4,000 points of sale.

4. Now Qualcomm has brought a motion for contempt sanctions, giving rise to contempt proceedings.

5. The patent-in-suit is being challenged by Apple and Intel in an opposition proceeding before the European Patent Office. The EPO Register indicates that oral argument has been scheduled for May 24. A panel of three examiners (chairman: Manuel Pavón Mayo; 1st examiner: Ali Hijazi; 2nd examiner: Thomas Agerbaek) will hear the parties and, typically, render a decision (which will be appealable) at the end of the day.

According to news agency reports, the contempt motion seeks to hold Apple responsible for the fact that the iPhone 7 and 8 remain widely available in Germany, asking the court to impose a significant fine or, in the alternative, imprison the CEOs of the defendant entitites (including Apple Inc. CEO Tim Cook). Some German-language media reports have focused on the question of whether Tim Cook is at risk of being imprisoned. He is not. Even if the court were to hold Apple in contempt (we'll get to that in a moment), it simply wouldn't happen. There's always some ignorant, incompetent and lazy journalists reporting on such cases.

When German courts order injunctions, the sanctions threatened in the related orders are described as follows:

• a contempt fine of 5 to 250,000 euros per violation, or as a substitute, imprisonment of the CEO, or

• imprisonment of the CEO.

The first part means that the CEO will be imprisoned if the contempt fine can't be collected ("as a substitute" in a scenario of default). Based on Bloomberg's quote from Qualcomm's press release, it appears that Qualcomm sought fines. Theoretically, this also means that the CEO might end up behind bars, but only if the fine isn't paid, and we all know Apple would pay if it had to.

The second bullet point relates to extreme cases in which courts have imposed multiple fines (which get ever higher) and a company still fails to comply. In that case, a CEO might be imprisoned even if a company was ready, willing and able to pay a fine--because the court would determine that fines won't do the job. But no court would ever consider this when the first allegation of non-compliance is brought, and that's why I can't imagine Qualcomm would have proposed that kind of sanction. Again, Qualcomm's statement to the media doesn't suggest that Qualcomm even tried to persuade the court to skip the step of a contempt fine and go straight to imprisonment.

Therefore there isn't even a need to talk about why there is no possibility of extradition.

So, practically, the question is whether Apple would be fined. The media reports are unclear. One of them refers to some iPhones still having been available in early January "in Apple stores," which may or may not refer to the official Apple Stores (with a capital S). Should that have been the case, it would likely have been an oversight in one or more of the 15 German Apple Stores. Any related fine would be small. But Qualcomm appears to primarily--if not exclusively--complain about Apple not having complied with its obligation to recall the iPhone 7 and 8 from its German resellers.

I heard Presiding Judge Dr. Zigann's announcement of the recall order live in court on December 20, 2018. I remember that the word "seriously" was mentioned in connection with Apple's obligation to ask resellers to return the banned products, and that there was the usual boilerplate in German recall orders about the defendant having to make sure resellers would get their money and any shipment costs back.

On ipwiki.de, a German-language IP-focused Wikipedia-style reference, it is noted that the recall obligation means the defendant must request that its customers return the banned products, but whether those customers comply with the request is their decision and cannot result in any liability on the defendant's part, provided that it has made reasonable efforts to call on its customers to return the banned products.

Basically, Apple's resellers (the major carriers and retail chains) are treating Qualcomm like your average patent troll. There have been other smartphone patent injunctions in Germany that resellers simply didn't take seriously. Instead of fearing that they might themselves become the target of patent infringement actions, resellers tend to just keep selling products while there is demand.

A German publication for the retail channel, Absatzwirtschaft, reported in early January on the implications of the relevant pair of injunctions. The article quotes me several times. It contains screenshots that show how some resellers were actually alluding to the injunctions in a humorous way (which obviously isn't funny if you're Qualcomm and just deposited $1.5 billion to enforce that pair of injunctions). A reseller named cyberport (link to screenshot) described the three banned iPhone models (7, 8, and X; though Apple had already discontinued distribution of the X some time before) as "verboten gut," a German saying that literally means "prohibited(ly) good," which means "too good to be lawful" in the sense of "extremely good."

This actually shows there was quite some awareness of Qualcomm's position that those products infringe (though Qualcomm apparently wasn't sure of its position; otherwise it would have allowed the court-appointed expert to look at Qorvo's chipset schematics, which Qualcomm had actually obtained for that very purpose in a U.S. discovery proceeding.

I guess Qualcomm's contempt motion is going to result in either no fine or in a small fine (assuming that Apple will have done what it's required to do under the law, which is to make a "serious" request that resellers return the related products), and then I wouldn't be surprised if Qualcomm at some point started suing Apple's resellers, though the problem for Qualcomm would be that the most important resellers are major carriers and Qualcomm wants to work with carriers (as some Qualcomm witnesses explained at the FTC v. Qualcomm antitrust trial in San Jose that ended a week ago).

Time is not on Qualcomm's side. The appeals court might stay enforcement, and/or the EPO might revoke the patent-in-suit.

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No quick win for Qualcomm over Apple in Germany: stipulated stay

Four months back, Qualcomm's lead counsel in the German Qualcomm v. Apple cases, Quinn Emanuel's Dr. Marcus Grosch, hoped to obtain a Germany-wide patent injunction against Apple this summer. The related case (one of various patent infringement claims Qualcomm has brought against Apple in Germany) went to trial this afternoon, and it's unlikely that anything, if ever, will happen in that particular matter before the summer of 2019.

The patent-in-suit, EP2954737 on a "power tracker for multiple transmit signals sent simultaneously," is under massive pressure because of Apple and Intel's opposition to its recent grant. Of the four prior art references cited, Alcatel Lucent's European patent application EP2442440A1 poses the greatest--though not the only--threat to Qualcomm's patent.

At today's trial it turned out that Qualcomm itself recognized that this patent, granted only about a year ago, is not the most defensible one. After reviewing Apple and Intel's petition for revocation, Qualcomm decided to narrow the claim scope by filing an application for a divisional patent that would (if granted, which is a huge IF) be limited to wireless devices. However, Presiding Judge Dr. Holger Kircher of the Mannheim Regional Court indicated in his initial summary of the court's preliminary position that he and his two colleagues were inclined to stay the case pending the EPO's decision on Apple and Intel's opposition--and the divisional patent that Qualcomm was seeking to obtain wouldn't have affected the court's validity assessment where we stand, given that a new filing, which may or may not result in a patent grant, just doesn't enjoy the strong presumption of validity that applies to actually-issued patents.

While the court was inclined to agree with Qualcomm's infringement theory and unconvinced of Apple's defenses (including its claim that Intel, its supplier, had prior use rights), validity was a lost cause for Qualcomm based on the current state of affairs. Therefore, Qualcomm's counsel didn't really see an alternative to a stipulated stay. He'd have preferred to limit the stay to the first decision by an EPO examiner on the new divisional patent application, but Judge Dr. Kircher reminded him of his procedural options: should there be other relevant developments, Qualcomm could bring a motion and the court would take another look at whether the stay might be lifted.

The parties finally stipulated to a stay. The opposition proceeding will likely result in a decision in mid-2019, given--as Samson & Partner's Dr. Wolfgang Lippich (a patent attorney on Apple's defense team) explained--the EPO's internal timelines for opposition proceedings involving patents that are being asserted in litigation.

On the infringement side, the court applied a broad claim construction, particularly with respect to the words "based on". Those words are followed by "a plurality of [components]," but despite Hoyng ROKH Monegier's Klaus Haft (lead counsel for Apple) explaining how the claim and certain paragraphs of the specification require multiple measurements to take place, the court remained convinced that this claim language dictated a rather broad interpretation (which, of course, has implications for validity as well, though validity will have to be resolved in a different forum, the European Patent Office).

By contrast, the court tends to interpret the statute governing prior use rights in Germany (§ 12 of the German Patent Act) rather narrowly. Reference was made today to an internal Intel presentation, but Judge Dr. Kircher's preliminary opinion was that Intel, while it had the relevant technical idea, had not actually implemented it to a sufficient extent by the priority date of Qualcomm's patent. He felt it was more like some people at Intel--and this must actually be about the mobile chipset division Intel acquired from Infineon--had said: "Wouldn't it be a nice idea to do this?" Unsurpisingly, Mr. Haft disagreed and pointed to the multi-year periods it takes from a firm technical decision to the actual availability of a chipset.

Apple had also raised antitrust defenses. However, Judge Dr. Kircher said that only the enforcement of an injunction would have antitrust implications, while Qualcomm could seek damages. Therefore, Qualcomm's allegedly anticompetitive behavior would not justify a stay of the entire case.

Since Apple convinced the court--and, by extension, even Qualcomm--that a stay was warranted, Apple's other defenses (such as its non-infringement theories, prior use, and antitrust defenses) are moot for the time being. Qualcomm now has to deliver a valid patent. Unless and until it does so (which will take time), this case here won't be resumed. Meanwhie, other Qualcomm v. Apple patent infringement assertions will go to trial. For the second half of the year, the Mannheim court has scheduled two Qualcomm v. Apple trials, and the Munich I Regional Court will hold three (there have already been first hearings in those cases).

Qualcomm's quest for leverage has been dealt a significant setback, but will continue without a doubt. But most likely today's stay wasn't the last one in that dispute.

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Apple and Intel jointly seeking invalidation of Qualcomm patent asserted against iOS Spotlight search

In the previous post I mentioned today's Qualcomm v. Apple hearing (Munich I Regional Court). Just before going to the courthouse I checked on the EPO register and found something interesting: one of the four patents-in-suit was just granted last year, and a result, it was still possible for Apple and Intel to file a timely notice of opposition with the European Patent Office:

Apple filed its notice of opposition on March 2, 2018; Intel followed three days later, raising the same substantive issues. Both Apple and Intel are represented by Samson &Partner. On Qualcomm's behalf, Quinn Emanuel's Dr. Marcus Grosch is trying to defend the patent against those requests for revocation.

The other three patents-in-suit are from the same family. But they were granted before, making nullity actions in the Federal Patent Court the only option for invalidation. It would be extremely surprising if Apple hadn't filed nullity complaints, and if Apple and Intel are brothers-in-arms in the EPO, that is likely also the case in the Federal Patent Court. I'm tempted to file a request with the Federal Patent Court for access to the case files, as I did in other cases (including one in which I had to overcome Samsung's opposition to my petition).

At a February hearing in another Munich Qualcomm v. Apple case, it was mentioned that some additional infringement claims had been added in the form of an amended complaint. One of the public attachments to Apple and Intel's opposition filings is an excerpt (the first two pages and the last page) from the related amendment, and indeed, the case number is that of one of the two cases heard in February.

Dr. Grosch mentioned the word "spotlights" at the Febraury hearing. At first I thought this was going to be about photo editing, given that Qualcomm is asserting a related patent in a U.S. case. However, having looked at the patents-in-suit and also the opposition filing with the EPO, a connection with digital imaging can be ruled out. I asked a member of my app development team, who then told me that Spotlight is known to him as a search feature (for local documents) on the Mac. The Wikipedia article I just linked to explains that the same technology was added to iOS at some point. The scope of the patents-in-suit is more about mobile than desktops. Maybe Qualcomm is also going after macOS, but there can be no doubt that mobile devices (iPhone, maybe also iPad) are being accused. The opposition filing cites prior art that is all about personal digital assistants and other mobile communications devices.

If I understood this correctly from what I read on the Internet, a typical Spotlight feature that iPhone users would know is the completion of a phone number: you start typing, and if you've previously dialed a number starting with the same digits, it's offered as an autocomplete option. Those Qualcomm patents aren't exactly search patents, but they relate to the combination of some user interface where different options are presented and the selection of and switching between communications channels.

The claims appear extremely broad to me--like the worst Nokia patents-in-suit I've seen, but those Nokia patents at least tended to be much older.

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