Qualcomm blocked evidence in German Apple suit that previously led to non-infringement finding in US

In a German lawsuit against Apple, Qualcomm's attorneys refused to agree to hold evidence confidential, preventing it from being evaluated by the court. That same evidence was held confidential by the company's attorneys in a U.S. case, which subsequently found Qualcomm's patents were not infringed.

After losing its patent infringement claims against Apple supplier Qorvo in an American trial, Qualcomm is working hard to make it difficult for courts elsewhere to evaluate the merits of its patent claims. That issue is in play in the German court that on Thursday issued an injunction against sales of iPhone 7 and iPhone 8 from Apple's retail stores in Germany.

Writing for Patent Progress, Josh Landau a Patent Counsel at the Computer & Communications Industry Association, noted that "while Apple was provided the opportunity to defend itself at a hearing, the court was deprived of key evidence — the schematics of the chip alleged to infringe, and the testimony of the designer of that chip."

Landau noted that the chip designer, Qorvo, had presented the same evidence in a U.S. trial, but in Germany, Qualcomm refused to agree to hold the evidence confidential, a stance that would reveal Qorvo's trade secrets to Qualcomm's own engineers. That blocked Apple from "presenting evidence of how the allegedly infringing chip actually operates — evidence that led to a finding of non-infringement in a U.S. court."

Florian Mueller of FOSS Patents further detailed the issues in the German case, which involved ten Qualcomm patents: eight targeting Apple's Spotlight search, and two involving "a patent on a power-efficient envelope tracker chip design" by Qorvo.

The German court issued an injunction on sales of Intel-based iPhone models prior to iPhone X in Germany.

"It's all because Qualcomm alleged something and Apple couldn't deny it without violating Qorvo's secrets," Mueller stated. "I am shocked that Qualcomm's procedural gamesmanship — firstly conducting discovery in the U.S. for the stated purpose of presenting chipset schematics in the Munich court, then making an about-face and asking the German court to rule, and the court-appointed expert to opine, on a basis that's lacking and wanting — has been rewarded.

"If they have the law and the facts on their side, they deserve to win, but here they wanted— and disconcertingly obtained— a ruling on a basis that I've previously called 'evidentiary minimalism' and which would be totally unimaginable in the United States with its far-reaching discovery regime."

Mueller added, "because of the way things went wrong here, I wouldn't hold my breath that this injunction will ever get enforced (for more than maybe a negligibly short period of time) as the appeals court — the Munich Higher Regional Court — won't necessarily agree with the court below that a patent holder should be rewarded for not enabling the court and the court-appointed expert to get the benefit of seeing the actual chipset schematics."

Qualcomm's efforts in Germany to prevent evidence from being evaluated by the court follows a surprise filing it made in China, where it demanded an injunction on iPhone sales without notifying Apple of any infringement and without allowing it to respond to the claims— which related to patents Qualcomm acquired for the purpose of using them offensively against Apple in China.

The Chinese court issued an "ex parte preliminary injunction — an injunction issued without notice to the enjoined party, and without any opportunity to respond," Landau wrote. "That sort of injunction is completely banned in the U.S. under the Federal Rules of Civil Procedure because it completely fails to meet the minimum bounds of due process."

Qualcomm is working to piece together leverage it can use in its negotiations with Apple and its suppliers, but its tactics in China and Germany are likely to backfire, particularly since the company has previously complained about due process in its legal defense related to fines imposed by Korea Fair Trade Commission.

Qualcomm faces a suit for $9 billion in damages from contract manufacturers, as well as a series of cases brought by government regulators, including the U.S. case brought by the Federal Trade Commission scheduled for January 4. Qualcomm also faces a consumer class action suite scheduled to go to trial in June, involving 250 million consumers arguing that Qualcomm's behavior is injurious and harming innovation in unfairly raising prices to end users.

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30 Comments

daven 16 Years · 722 comments

About 6 years ago

I wonder what recourse Apple has. If they get that admitted into evidence on appeal, if additional evidence is allowed in appeal, then it seems that Apple could argue that Qualcomm should be held liable for lost sales and if this quarter is a slow one, blame it all on Qualcomm.

ktappe 16 Years · 824 comments

I wonder if a legal expert could answer this Q: If the requisite evidence has already been presented in U.S. court, isn't it therefore available to the German court? Or are German courts willfully blind to previously available discovery? If the latter, that seems like a pretty f---ed up "justice" system Germany has.

bells 8 Years · 140 comments

ktappe said:

I wonder if a legal expert could answer this Q: If the requisite evidence has already been presented in U.S. court, isn't it therefore available to the German court? Or are German courts willfully blind to previously available discovery? If the latter, that seems like a pretty f---ed up "justice" system Germany has.

Qualcomm is claiming Apple's devices infringe a battery saving technology. Apple and its supplier Quorvo is saying that is not the case. Apple can achieve the same result using another method not patented by Qualcomm. However, Apple's supplier Quorvo doesn't want to share the information with Qualcomm's engineers because it is a trade secret.

So, in the US, the Court was allowed to view Quorvo's technology without it being made available to Qualcomm's engineers, and the Judge was convinced Apple's iPhones didn't infringe Qualcomm's patents.

The difference in outcome is between the way the courts and parties handled the evidence. In the US, the Court was able to evaluate the evidence, which was kept secret from Qualcomm's engineers. In Germany, Qualcomm prevented Apple and its supplier from keeping the evidence confidential, which allowed the Judge to rule against Apple. Totally whacky if you ask me.

Apple's supplier is rightfully worried that if its trade secrets are revealed to Qualcomm, Qualcomm will steal its otherwise unprotected technology.

genovelle 16 Years · 1481 comments

ktappe said:

I wonder if a legal expert could answer this Q: If the requisite evidence has already been presented in U.S. court, isn't it therefore available to the German court? Or are German courts willfully blind to previously available discovery? If the latter, that seems like a pretty f---ed up "justice" system Germany has.

It looks like they have been fishing the world for a court that fit their needs. In both China and Germany questionable actions were allowed. So, you issue and injunction based only on the word of the plaintiff. Apple heard about the China case after the fact. In Germany they kept the refuting evidence out by demanding to see their competitor’s trade secrets.

I really hope Intel gets it together and shuts them down.

larryjw 9 Years · 1036 comments

ktappe said:

I wonder if a legal expert could answer this Q: If the requisite evidence has already been presented in U.S. court, isn't it therefore available to the German court? Or are German courts willfully blind to previously available discovery? If the latter, that seems like a pretty f---ed up "justice" system Germany has.

I'm retired attorney who had one case which crossed international boundaries (with India). I'm certainly no expert here and would be interested in the opinion of attorneys who have practiced in the international arena, particularly in intellectual property.

Nonetheless, I can point to a recent (June 14, 2018) SCOTUS decision on Comity (this is the legal term for what we are discussing).

In this particular case, the Federal Second Circuit (an Appeals Court) said that when a foreign government submits an official statement on the meaning and interpretation of its laws, federal courts are “bound to defer” to the foreign government’s construction of its laws, whenever that construction is “reasonable.” [
See Animal Science Products, Inc., et al., v. Hebei Welcome Pharmaceutical Co. Ltd., et al.
837 F. 3d 175
Issues
Is a court bound to defer to a foreign government’s interpretation of its domestic law when appearing before the court?
Oral argument:
April 24, 2018
Court below:
United States Court of Appeals for the Second Circuit

On appeal of this decision to the Supreme Court, Justice Ginsberg, writing for the unanimous court,
found that when determining foreign law under FRCP 44.1, “[a] federal court should accord respectful consideration to a foreign government’s submission, but is not bound to accord conclusive effect to the foreign government’s statements.” (FRCP is Federal Rules of Civil Procedure).

You should infer from this SCOTUS decision that it is highly likely the German courts would similarly view foreign court decisions (i.e., US court decisions).

From this I, and you, would be wise to conclude that the German justice system is not thereby "f---ed up".