The ongoing patent battle between Apple and Qualcomm continues. The battle is currently in the pre-trial motions stage, where both sides try to get the judge to agree as to what evidence will be allowed to be presented during the trial.
United States Magistrate Judge Mitchell D. Dembin granted Apple some important pre-trial motions, where Apple asked the court to accept that certain patents involved in the case were invalid, or that the patents had not been infringed by the Cupertino firm.
Qualcomm apparently didn’t fight this motion when it should have, and the judge basically told them the legal equivalent of, “when you snooze, you lose.”
The procedural context, which the order summarizes at the start, is that Apple’s original complaint involved, among other things, requests for declaratory judgment on invalidity and non-infringement of nine Qualcomm patents. With the first amended complaint, Apple tackled another nine Qualcomm patents. As an Apple filing noted (see the update paragraph at the end of this June 2017 post), Qualcomm–quite surprisingly!–elected not to bring compulsory infringement counterclaims, forever precluding Qualcomm from bringing such charges.
Although Qualcomm later said it wanted to present expert testimony to bolster its position, Apple argued that it was too late for the chip maker to do so, and the judge concurred.
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[.]”
While Apple scored with the ruling, it wasn’t a total loss for Qualcomm, as the firm will be allowed to present testimony related to whether certain patents cover essential technology for any smartphone, a key factor in this dispute.