The long-running patent infringement dispute between Apple and Qualcomm is at the stage of pre-trial motions – where both sides try to get rulings on what will and won’t be allowed in evidence during the trial.

The judge in the case has granted some of Apple’s motions, and effectively told Qualcomm that it will have to accept the consequences of its poor legal strategy …

Foss Patents firstly explains the background – that Apple asked the court to accept that certain patents were either invalid, or that the Cupertino company did not infringe them. Qualcomm, oddly, chose not to fight this when it had the opportunity to do so.

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.

The chipmaker then changed its mind, and said that it wanted to present expert testimony to support its position. Apple argued that it was too late for Qualcomm to do this, and the judge agreed.

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[.]”

Essentially, the judge told Qualcomm that it made a stupid decision initially, but it will now have to live with that fact.

The judge didn’t grant all of Apple’s motions to strike Qualcomm’s expert testimony. Qualcomm will be allowed to present testimony about whether or not certain patents cover essential technology for use in any smartphone, as this is a key factor in the case. If a patent is considered ‘essential,’ then so-called FRAND rules apply: the patent owner must license the patent on terms that are Fair, Reasonable And Non-Discriminatory.

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Ben Lovejoy

Ben Lovejoy is a British technology writer and EU Editor for 9to5Mac. He’s known for his op-eds and diary pieces, exploring his experience of Apple products over time, for a more rounded review. He also writes fiction, with two technothriller novels, a couple of SF shorts and a rom-com!

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