March 2017

Federal Trade Commission Sues Qualcomm for Anticompetitive Licensing Practices in Cell Phone Semiconductor Market
by John C. Paul, D. Brian Kacedon, and Sonja W. Sahlsten
The Federal Trade Commission filed a complaint on January 17 in Federal district court, alleging that Qualcomm engaged in anticompetitive licensing practices by agreeing to license baseband processor chip patents—essential to technical standards such as GSM, CDMA, and LTE—on fair, reasonable, and non-discriminatory terms, and then (1) refusing to license competitors and (2) requiring customers to license the patents before selling them any of these baseband processor chips.

Inequitable Conduct Results from Trying to Revive a Lapsed Patent Without Investigating if It Was Intentionally Abandoned
by John C. Paul, D. Brian Kacedon, and R. Benjamin Cassady
A patent owner attempted to revive a lapsed patent on the basis that the previous patent owner had unintentionally allowed the patent to expire. A court found him guilty of inequitable conduct because he did not investigate whether the previous patent owner allowed the patent to lapse intentionally or unintentionally. As a result, his attempts to enforce the patent were dismissed.

Appeal of PTO Validity Decision Dismissed in Light of Patent Owner's Unilateral Covenant Not to Sue the Appellant
by John C. Paul, D. Brian Kacedon, and Robert D. Wells
Adverse decisions by the U.S. Patent Office may not be appealed to a federal court unless the appellant meets constitutional standing requirements by demonstrating that it suffered actual or imminent threat of harm. In PPG Industries, Inc. v. Valspar Sourcing, Inc., the Federal Circuit held that although a patent owner never directly threatened to assert two patents, a competitor had standing to appeal the PTO’s validity decisions of the patents. But in light of the patent owner’s covenant not to sue the competitor for infringing the patents, the court found the appeals moot and dismissed the competitor’s appeals.

Events
Licensing Executives Society International Annual Conference
Paris, France
April 24-25, 2017

Best Practices in Licensing: Developing, Negotiating & Executing Transactions
Washington, DC
May 8-9, 2017

LES Asia Pacific Conference
Melbourne, Australia
May 9-12, 2017

Patent App[eals]® includes PDFs of all patent-related Federal Circuit decisions dating back to 2001. A user can search on keywords, judges, dates of decisions, lower court from which the case was appealed, case name, case number, and whether or not a case was heard en banc. In addition, if the decision was summarized for Federal Circuit IP blog, the Finnegan case summary is included.