Magistrate judge rebukes Qualcomm for iPhone patent infringement allegations it originally chose not to bring

“It’s pretrial season in the Huawei-Samsung and Apple-Qualcomm FRAND disputes, thus a flurry of motion practice” Florian Mueller writes for FOSS Patents. “Before I’ll get to discuss the strategically extremely important exhaustion issue (in light of the Supreme Court’s 2017 Lexmark) in Apple v. Qualcomm, there’s also a short but interesting ruling that United States Magistrate Judge Mitchell D. Dembin handed down in the Southern District of California on Tuesday.”

Mueller writes, “The following harsh words show that Magistrate Judge Dembin was annoyed by the way in which multiple Qualcomm expert reports were inconsistent with Qualcomm’s decision not to bring infringement counterclaims with respect to the original set of nine patents.”

Qualcomm’s counsel know that in a declaratory judgment action by a licensee against a patentee seeking an order of non-infringement, the patentee, Qualcomm, bears the burden of persuasion of infringement. […] Qualcomm made the tactical decision not to assert infringement and thus avoid certain discovery obligations as mentioned above. In its expert designations, Qualcomm chose not to disclose that certain experts expressly would opine on infringement and assert that Plaintiffs are infringing patents-in-suit. Qualcomm will be held accountable for the consequences of its tactical decisions. (emphasis added)

To the extent that Qualcomm claims they have disclosed in discovery their views regarding infringement and, consequently, there is no surprise and no prejudice, is unavailing. Rules are rules and tactical decisions have consequences[.] — United States Magistrate Judge Mitchell D. Dembin

Read more in the full article here.

MacDailyNews Take: You reap what you sow or, more accurately, you cannot reap when you don’t sow, Qualcomm.

Qualcomm’s unreasonable, illogical, and irrational licensing scam, which charges a percentage of the total cost of all components in the phone, even non-Qualcomm components, must end.

EU regulators charge Qualcomm with additional violation in pricing case – July 19, 2018
Apple petitions U.S. Patent Office to invalidate four Qualcomm patents – June 22, 2018
Apple brings 5G and national security into Qualcomm patent battle – June 18, 2018
Analyst: Apple, Qualcomm legal fight could settle this year – June 11, 2018
Apple CEO Tim Cook to be deposed in Qualcomm lawsuit – April 6, 2018
Judge Koh sets aside sanctions order against Apple in FTC v. Qualcomm antitrust case – February 8, 2018
Apple gets support from Lawyers for Civil Justice in fight against discovery sanctions – February 1, 2018
EU fines chipmaker Qualcomm $1.2 billion for paying Apple to shut out rivals’ chips – January 24, 2018
Apple sanctioned in Qualcomm FTC case for withholding documents – December 22, 2017
Apple countersues Qualcomm for patent infringement – November 29, 2017
Apple designing next-gen iPhones, iPads that would dump Qualcomm components – October 31, 2017
Qualcomm faces long odds in attempt to get ban of iPhone sales and manufacturing in China – October 17, 2017
Qualcomm files lawsuits seeking China iPhone ban, escalating Apple legal fight – October 13, 2017
Qualcomm fined record $773 million in Taiwan antitrust probe – October 11, 2017
Apple faces down Qualcomm, Ericsson over EU patent fees – October 2, 2017
Qualcomm loses two key rulings in its patent royalty fight with Apple – September 21, 2017
Apple’s A11 Bionic obliterates top chips from Qualcomm, Samsung and Huawei – September 18, 2017
U.S. judge rules Apple lawsuits against Qualcomm can proceed – September 8, 2017
Qualcomm CEO expects out of court settlement with Apple – July 18, 2017
Apple-Qualcomm legal dispute likely to be ‘long and ugly’ – July 7, 2017
Qualcomm wants court to block Apple from U.S. iPhone imports and sales – July 6, 2017
Judge rules U.S. FTC antitrust lawsuit against Qualcomm to proceed – June 27, 2017
Apple uses Supreme Court decision to escalate war against Qualcomm – June 20, 2017
Apple’s amended San Diego complaint against Qualcomm leaves no doubt: many billions at stake – June 20, 2017


  1. The court should also go retroactive and have Qualcomm rebate Apple all of the unnecessary charges they were not entitled to in the past, as well as to others similarly held ransom. May their pain and suffering for their hubris and sense of unearned entitlement be swift and brutal.

  2. All I want is for the courts to help end FRAND abuse. Technology standards, such as 5G, are based on an aggregation of intellectual property. That IP is supposed to be available under FRAND terms. If the standards organizations are not policing the FRAND terms under their purview, then the courts will have to step in.

    My suggestion is that the FRAND terms should be defined upfront when a standard is developed. In order for a company’s IP to be adopted into the standard, it would have to sign a binding FRAND agreement complete with fee terms that would apply equally to everyone. That would end the problem.

  3. All that happened here was that Qualcomm’s lawyers made a mistake. Apple made a motion to prevent Qualcomm’s witnesses from giving the jury all of their testimony. Qualcomm’s lawyers decided to not oppose that motion, and the time to do so, passed. Then they decided they should, and the judge is saying that it’s too bad they they changed their minds, but that they made the decision, and now they can’t change it.

    That’s all this really is. It has nothing to do with whether Apple or Qualcomm is correct on the facts, just how much of Qualcomm’s experts can testify to, on stand.

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