Apple Inc. v. Qualcomm Incorporated

Overview

This is not a district-court infringement suit; it is the administrative counterpart to one. The caption is Apple Inc. v. Qualcomm Incorporated, but the forum is the USPTO's Patent Trial and Appeal Board (IPR2018-01315, filed June 29, 2018, terminated September 25, 2025). Both parties are large operating companies — no NPE/PAE, university, or non-practicing entity is involved. Qualcomm Incorporated (San Diego) is a fabless semiconductor and wireless-technology company that designs baseband/modem chipsets and runs a very large patent-licensing business; it owns U.S. Patent No. 8,063,674. Apple Inc. (Cupertino) is the accused implementer: it designs its own A-series application processors and iPhones/iPads. Apple was the petitioner, seeking cancellation of claims; Qualcomm was the patent owner defending them. The IPR is therefore best understood as Apple's defensive/leverage play inside the 2017–2019 global Apple–Qualcomm patent war, which also included Qualcomm Inc. v. Apple Inc., No. 3:17-cv-02398-DMS-MDD (S.D. Cal., filed Nov. 29, 2017, Judge Dana M. Sabraw; Magistrate Judge Mitchell Dembin) and ITC Investigation No. 337-TA-1093 (instituted Jan. 3, 2018). The separate Apple-led antitrust/FRAND case, In re Qualcomm Litigation, No. 3:17-cv-00108-GPC-MDD, sat before Judge Gonzalo Curiel.

The technology and the accused products. The '674 patent, titled "Multiple Supply-Voltage Power-Up/Down Detectors," issued November 22, 2011 from application 12/365,559 (filed February 4, 2009), so the pre-AIA §§ 102/103 regime applies. In one sentence: it claims a power-on-control (POC) circuit for chips that run a low-voltage core supply alongside a higher-voltage I/O supply, in which one or more feedback circuits adjust the current capacity of an adjustable-current power-up/down detector so the chip avoids the "glitch"/leakage current that flows when all the detector's transistors are momentarily on during a core power-up, without giving up detection speed (illustrated by feedback transistor M8 in Fig. 4; Fig. 1 is the applicant-admitted prior-art circuit that became the fulcrum of the whole appeal). Qualcomm accused circuitry in Apple's A10, A11 and A12 application processors — used across iPhone 7 through the then-current iPhone XS generation — of practicing the patent, specifically claim 1. That accusation was tested twice in the conventional fora: ALJ MaryJoan McNamara's March 26, 2019 initial determination in 337-TA-1093 found claim 1 infringed and claims 1 and 8 valid, and recommended a limited exclusion order and cease-and-desist order (her April 16, 2019 public-interest findings adhered to that recommendation); and a San Diego jury returned a roughly $31 million verdict against Apple in mid-March 2019, which Qualcomm publicly characterized as finding infringement of "the same patent" after Apple dropped its invalidity defense at trial. (I have verified the ITC findings from the ID and Qualcomm's March 26, 2019 press release; the precise jury date and the exact three patents in the verdict are sourced only to contemporaneous press accounts and Qualcomm statements, not to a document I retrieved.)

Procedural posture and why the forum matters

Only one patent is at issue here — the '674 — and Apple attacked it in two parallel IPRs split by claim group: IPR2018-01315 (claims 1, 2, and 5–7) and IPR2018-01316 (claims 8, 9, 12, 13, and 16–22). Both petitions asserted the same two grounds: (1) obviousness over Steinacker, Doyle and Park; and (2) obviousness over applicant-admitted prior art (AAPA) — the '674's own Fig. 1 and background text — in view of Majcherczak (and, for some claims, Matthews). The Board instituted on all grounds (Paper 7), held a joint hearing on October 11, 2019 (Paper 25), and issued a consolidated Final Written Decision on January 3, 2020 (Paper 26) holding the challenged claims unpatentable on Ground 2 and rejecting Ground 1. Qualcomm appealed; the Federal Circuit vacated and remanded in Qualcomm Inc. v. Apple Inc., 24 F.4th 1367 (Fed. Cir.

I'll research this case across the PTAB docket, the Federal Circuit, and the parallel district court litigation.

I have the core PTAB/Federal Circuit record. Now let me pin down the parallel district court and ITC litigation where the '674 patent was actually asserted, plus post-remand details.

Research memo — Apple v. Qualcomm, IPR2018-01315 (U.S. Patent No. 8,063,674)

Threshold point on framing

The case identified in the metadata is not an infringement action — it is an inter partes review before the PTAB. So there is no complaint, answer, Markman order, or jury verdict in this docket. The requested litigation milestones exist across three parallel tracks, which I separate below:

I'll research this. Note one framing point up front: IPR2018-01315 is a PTAB inter partes review, not a district-court infringement suit — so "plaintiff" maps to the petitioner, Apple Inc. Let me confirm counsel of record from the docket and related sources.

Confirmed this is the PTAB proceeding (Apple = petitioner). Now let me pin down counsel of record on the PTAB docket itself (petition, mandatory notices, and later papers).

Good — Fish & Richardson is showing up consistently. Let me confirm the formal lead/backup counsel designation in the petition's mandatory notices and check the post-remand appeal counsel.

Bottom line

IPR2018-01315 is not a district-court infringement suit — it is an inter partes review before the PTAB in which Apple Inc. was petitioner (the "plaintiff" side per your metadata) and Qualcomm Incorporated was patent owner. There is therefore no "local counsel" or "in-house counsel of record" in the district-court sense; the relevant counsel of record are Apple's PTAB counsel (Fish & Richardson P.C.) and, on the two Federal Circuit appeals, the same firm's appellate team.

Counsel of record for Apple Inc. (petitioner) — PTAB

The signature block of the consolidated Final Written Decision and the papers in IPR2018-01315/-01316 identifies Fish & Richardson as Apple's counsel. Source: Apple Inc. v. Qualcomm Inc., IPR2018-01315/-01316, Paper 26 (P.T.A.B. Jan. 3, 2020), copy at bannerwitcoff.com/wp-content/uploads/2022/11/IPR2018-01315.pdf.

Service in the proceeding ran through Fish & Richardson's PTAB mailbox (axf-ptab@fr.com), the same address used across Apple's 2018 Qualcomm IPR filings.

Counsel on the Federal Circuit appeals (Nos. 2020-1558 and the later remand appeal)

Appellee Apple Inc.'s corrected replacement response brief (Dec. 14, 2020) and the Federal Circuit's opinions list:

• Lauren A. Degnan — appellate lead/arguing counsel, Fish & Richardson P.C., 1000 Maine Ave., Suite 1000, Washington, DC 20024; principal in F&R's appellate group.
• Christopher W. Dryer — Fish & Richardson P.C., Washington, DC.
• Michael J. Ballanco — Fish & Richardson P.C., Washington, DC.
• Whitney Reichel — Fish & Richardson P.C., Boston.

Sources: Qualcomm Inc. v. Apple Inc., No. 2020-1558 (Fed. Cir. Feb. 1, 2022) (24 F.4th 1367), attorney listing at casemine.com/judgement/us/61fe2741b50db920f00b7d0c; Apple's corrected response brief signature block (J.A. filing reproduced at ptacts.uspto.gov); Apple's en banc petition certificate of interest (Mar. 18, 2022) also lists "Fish & Richardson P.C.: W. Karl Renner, Thomas Rozylowicz, Timothy Riffe, David L. Holt."

For context, Qualcomm's opposing PTAB/appellate team came from Jones Day (Jennifer L. Swize argued 2020-1558, with Robert Breetz, David B. Cochran, David M. Maiorana, Joseph M. Sauer, Matthew Johnson, Joshua R. Nightingale, Israel Sasha Mayergoyz), with the PTO Solicitor's Office intervening.

Caveats on sourcing

• Lead vs. backup designation: I confirmed the attorney roster from the FWD signature block, the Federal Circuit briefs, and the certificate of interest, but I did not retrieve the text of Apple's Mandatory Notice (Paper 2/3) in IPR2018-01315 that formally designates lead and back-up counsel under 37 C.F.R. § 42.8(b)(3). The "lead counsel" label for Renner is inferred from his first-listed position and his identical role in Apple's contemporaneous Fish & Richardson IPRs (e.g., the § 42.8 notices in Apple's 2020 Masimo/Pinn IPRs, where Renner is expressly designated lead with Devoto/In as backup).
• In-house counsel: No Apple in-house attorney appears as counsel of record on the PTAB docket. (Apple's Chief IP Counsel Jeffrey Myers signed powers of attorney in certain other Apple IPRs, per allegations in the Masimo litigation, E.D. Tex. No. 2:23-cv-00439, Dkt. 146 — but I found no filing tying him to IPR2018-01315.)
• Post-remand appeal: After the Board's Nov. 10, 2022 remand decision, Qualcomm again appealed (leading to the reversal and the Sept. 25, 2025 IPR certificate noted in your metadata). I could not verify the docket number or counsel roster for that second appeal within this search; it is reasonable but unconfirmed that Fish & Richardson (Degnan/Dryer/Ballanco) again represented Apple. Treat that as unverified.
• No sealed-filing issue: PTAB papers in this proceeding are public; nothing about counsel identification is under seal.

I'll research the counsel of record for the patent owner/defendant side. Note the framing issue: this is an IPR, so the "defendant" is Qualcomm as Patent Owner, and counsel of record is whoever appeared in PTAB filings (backup counsel/lead counsel designations), plus the parallel district court defense counsel if relevant.

Framing correction (important)

The user's question asks for counsel "representing the defendant(s) in this patent infringement case." IPR2018-01315 is not an infringement action, and it has no defendant. At the PTAB, Apple is the Petitioner and Qualcomm is the Patent Owner (the party defending the '674 patent). Consistent with the case metadata naming Qualcomm as "defendant," I treat Qualcomm as the party whose counsel you want — i.e., Qualcomm's counsel of record as Patent Owner in IPR2018-01315, and, because you asked about infringement-case counsel, its counsel in the parallel S.D. Cal. litigation. Where I could not verify a fact I say so.

---

1. Counsel of record for Qualcomm (Patent Owner) in IPR2018-01315 — Jones Day

The PTAB record shows a single firm, Jones Day, carrying Qualcomm's side of both IPR2018-01315 and -01316, start to finish.

Sourcing basis and its limits. The Jones Day PTAB appearance is documented by (a) the six-address Jones Day signature block at the end of the Board's final written decision in IPR2018-01315/-01316 (copy hosted by Banner Witcoff), and (b) the Federal Circuit Rule 47.4 certificate and appellant's brief caption in No. 20-1558, which lists the Jones Day team and states the firm "appeared for the party … in the trial court or agency" (appellant's brief). The Board's FWD also cites "Patent Owner's Mandatory Notices, Paper 3" for Qualcomm's RPI and counsel disclosures (FWD text). I was unable to open Paper 3 itself, so the precise lead/backup designation as designated in the 2018 mandatory notice is not directly verified; the role assignments above are inferred from the FWD signature block, the Fed. Cir. disclosures, and Cochran's lead-counsel designation in Qualcomm's companion '633 IPR (mandatory notice).

Post-remand / second appeal (No. 23-1209). Qualcomm appealed again after the Board's 2022-11-10 remand decision; RPX records the appeal originating from IPR2018-01315/-01316 (RPX Insight). I did not locate the appearance list for that appeal, so I cannot state whether the Jones Day team changed; given continuity across 2018–2022, Jones Day is the likely counsel, but that is an inference, not a sourced fact.

No in-house counsel verified. I found no Qualcomm in-house attorney named on the PTAB or Federal Circuit papers in this matter. Qualcomm appears to have litigated entirely through outside counsel.

---

2. The opposing side, for completeness (Petitioner Apple)

Petitioner's counsel of record was Fish & Richardson P.C.: W. Karl Renner, Thomas Rozylowicz, Timothy Riffe, and David L. Holt on the PTAB/appellate papers, with Lauren Ann Degnan (Washington, D.C.) arguing for Apple in No. 20-1558, together with Michael John Ballanco, Christopher Dryer, and Whitney Reichel (Boston). Source: Petition for rehearing, No. 20-1558 and the Fed. Cir. appearance listing. The PTO Solicitor's Office (Maureen Donovan Queler, Thomas W. Krause, Robert J. McManus, Farheena Y. Rasheed) appeared for the Director as intervenor.

---

3. Qualcomm's counsel in the parallel infringement litigation (S.D. Cal.)

Because the '674 patent was actually asserted in district court, here is Qualcomm's litigation team in the related S.D. Cal. actions (Nos. 3:17-cv-0108-GPC-MDD, In re Qualcomm Litigation, and 3:17-cv-01375-DMS-MDD). Qualcomm was plaintiff in its affirmative cases and counterclaim-defendant in Apple's — there is no true "defendant" role for Qualcomm in that track either.

Sources: signature blocks on Qualcomm's filings in Nos. 3:17-cv-01375 and 3:17-cv-0108 (Dkt. 749, Dkt. 629-2, [Dkt