(Reuters) – Intel Corp got a new chance to challenge two Qualcomm Inc smartphone patents on Tuesday, when a U.S. appeals court held that a U.S. Patent and Trademark Office tribunal had wrongly rejected Intel’s arguments that parts of the patents were invalid.
The two rulings by the U.S. Court of Appeals for the Federal Circuit also said Qualcomm’s 2019 global settlement of a related patent dispute with Apple Inc over iPhones, iPads and other devices using Intel modem chips didn’t prevent the court from hearing Intel’s appeals.
Qualcomm sued Apple for allegedly infringing several patents in 2017, and Intel challenged the validity of the two patents at issue at the Patent Trial and Appeal Board in 2018. One of the patents relates to receiving data transmissions, the other to data processing.
The PTAB invalidated some parts of both patents in 2020, but found others valid. Intel appealed the board’s decisions on the surviving parts of the patents.
The Federal Circuit rejected Qualcomm’s argument that Intel lacked standing to appeal because it hadn’t been sued and because the Apple dispute had settled. Intel still faced a real risk of being sued, the court said.
Writing for a three-judge panel, U.S. Circuit Judge Sharon Prost also said the Apple settlement was irrelevant because Intel wasn’t a party to it. Prost had rejected an Apple PTAB appeal last month based on its license to the Qualcomm patents.
The Federal Circuit revived and sent back Intel’s challenges to parts of the Qualcomm patents that the PTAB had found valid because of errors in the board’s analysis.
Qualcomm and its attorneys didn’t immediately respond to a request for comment. Intel and lawyers representing the company also did not respond.
The cases are Intel Corp v. Qualcomm Inc, U.S. Court of Appeals for the Federal Circuit, Nos. 2020-1664 and 2020-1828.
For Intel: Gregory Lantier and Thomas Saunders of Wilmer Cutler Pickering Hale and Dorr
For Qualcomm: Jonathan Franklin of Norton Rose Fulbright; and Jennifer Swize of Jones Day
