Qualcomm: Inconsistent With Respect To Facts, Its Own Actions

In the wake of Qualcomm’s loss in front of the full International Trade Commission (ITC) yesterday, Qualcomm released a statement that doesn’t match up with the facts.

Here’s what Qualcomm had to say:

Also today, the U.S. ITC issued a Notice of Final Determination in ITC Investigation No. 337-TA-1065.  The Commission's decision is inconsistent with the recent unanimous jury verdict finding infringement of the same patent after Apple abandoned its invalidity defense at the end of trial.  We will seek reconsideration by the Commission in view of the jury verdict.

The implication is that the jury found the patent valid, which would be inconsistent with the ITC’s finding—but that’s not what happened.  The jury made no finding on invalidity. The jury verdict is public—and the jury didn’t answer whether the ‘490 patent is invalid.  They weren’t asked to, as the jury form shows:  

FINDINGS ON INVALIDITY DEFENSE
Please answer this question regardless of your findings on infringement.

Inventorship
Has Apple proven by clear and convincing evidence that the '949 patent is invalid for failing to meet the requirement to name all actual inventors?
Answer "Yes" or "No."  "Yes" is a finding for Apple.  "No" is a finding for Qualcomm.

Yes ____ No __(checkmark)__

Apple decided not to put an invalidity defense forward in district court on the ‘490 patent, as Qualcomm notes.  This means the jury verdict contains nothing regarding validity. There’s nothing in the verdict to be inconsistent with.

In fact, Qualcomm itself has abandoned claims in one venue, only to win on the same argument in a later case in a different venue—the exact situation it claims is “inconsistent” here.

Qualcomm started its ITC case out by asserting six patents—including U.S. Patent No. 8,838,949.  Qualcomm dropped the ‘949 patent from their ITC case, but continued to assert the ‘949 patent in district court.  Under Qualcomm’s logic, that means that the ‘949 infringement verdict in the district court case is inconsistent with the ITC case, where Qualcomm chose not to present an infringement case to the ITC.

As long as plaintiffs get multiple bites at the apple across multiple venues, this type of split decision can occur.  One possible way to reduce the likelihood of this occurring again would be to ensure that, where a federal district court has jurisdiction over a party, the ITC does not.

Joshua Landau

Joshua Landau is the Patent Counsel at the Computer & Communications Industry Association (CCIA), where he represents and advises the association regarding patent issues.  Mr. Landau joined CCIA from WilmerHale in 2017, where he represented clients in patent litigation, counseling, and prosecution, including trials in both district courts and before the PTAB.

Prior to his time at WilmerHale, Mr. Landau was a Legal Fellow on Senator Al Franken’s Judiciary staff, focusing on privacy and technology issues.  Mr. Landau received his J.D. from Georgetown University Law Center and his B.S.E.E. from the University of Michigan.  Before law school, he spent several years as an automotive engineer, during which time he co-invented technology leading to U.S. Patent No. 6,934,140.

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