Litigation

Intel Corporation v. Qualcomm Incorporated

instituted; on appeal

IPR2019-00047

Patents at issue (1)

9154356

Plaintiffs (1)

Summary

Intel Corporation filed an inter partes review challenging claims 1, 7, 8, 10, 11, 17, and 18 of U.S. 9,154,356, with Apple Inc. as a real party in interest. The Board instituted on all claims/grounds; the proceeding was on appeal.

Case overview & background

Plain-language overview of the case: parties, accused product, patents at issue, and why the suit matters.

Overview and Background — Intel Corp. v. Qualcomm Inc., IPR2019-00047 (PTAB)

A framing note first, because it changes every "venue" question: IPR2019-00047 is not a district-court infringement suit. It is an inter partes review before the Patent Trial and Appeal Board, captioned Intel as petitioner and Qualcomm as patent owner, with Apple Inc. named as a real party in interest alongside Intel. See Final Written Decision, Intel Corp. v. Qualcomm Inc., IPR2019-00047 (P.T.A.B. July 8, 2020) (Paper 35) (identifying "Intel and Apple Inc." as RPIs), PDF. The underlying infringement dispute was Qualcomm's 2017–18 campaign against Apple: Qualcomm asserted the '356 patent against Apple in Qualcomm Inc. v. Apple Inc., No. 3:17-cv-02398 (S.D. Cal.) (later dismissed) and in ITC Inv. No. 337-TA-1093, Certain Mobile Electronic Devices and Radio Frequency and Processing Components Thereof (II), instituted January 3, 2018 on Qualcomm's November 30, 2017 complaint. Both parties are operating companies, not NPEs: Intel is a semiconductor manufacturer (and, from the iPhone 7 generation, Apple's LTE baseband modem supplier); Qualcomm is a San Diego fabless chip designer and one of the largest patent licensors in wireless. The accused technology was the RF receiver front end — specifically the low-noise amplifier (LNA) circuitry in Intel's SMARTi transceiver chips that Apple used in accused iPhones, which Qualcomm's ITC expert contended used separately controllable LNA stages to handle carrier-aggregated signals. See Initial Determination, Inv. No. 337-TA-1093 (ALJ Pender), usitc.gov.

The patent and posture. One patent is at issue: U.S. Patent No. 9,154,356 B2, "Low noise amplifiers for carrier aggregation" (Qualcomm; inventors Aleksandar Miodrag Tasic and Anosh Bomi Davierwalla; issued 2015). Claim 1, the illustrative independent claim, recites an apparatus with first and second amplifier stages that are "configured to be independently enabled or disabled," both receiving an input RF signal "employing carrier aggregation" (transmissions on multiple carriers at different frequencies), with each stage feeding a separate load circuit and passing a different one of the carriers — essentially a multi-LNA receive front end that can be switched between non-CA and CA modes. Intel challenged claims 1, 7, 8, 10, 11, 17 and 18 in a petition filed November 8, 2018, on Uehara-based anticipation and obviousness grounds, with Perumana, Youssef, and the

Key legal developments & outcome

Major rulings, motions, claim construction, settlements, and the present posture or final disposition.

I'll research this. One framing note up front that I'll verify: the docket number given is a PTAB inter partes review, not a district-court infringement suit — so several of the requested milestones (complaint, Markman, verdict) may not exist in that docket. Let me confirm the record.

Confirmed: this docket is a PTAB IPR, not a district-court suit. Let me pin down the procedural details and the related infringement litigation where the '356 patent was actually asserted.

Plaintiff representatives

Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

I'll research the counsel of record. Note at the outset that this is a PTAB inter partes review (not a district court infringement action), so the "plaintiff-side" party is the petitioner, Intel Corporation.

I have strong leads. Let me confirm the petition-stage counsel listing and individual attorney details.

Now let me find the petition-stage mandatory notices listing lead/backup counsel, plus verify the individual attorneys' firm affiliations.

Threshold correction on the party posture

IPR2019‑00047 is not a district‑court infringement suit. It is an inter partes review at the PTAB, Intel Corporation v. Qualcomm Incorporated, filed Nov. 8, 2018, on U.S. Patent No. 9,154,356 (Judge panel: APJs Wormmeester, Howard, Moore). The "plaintiff‑side" party is therefore the petitioner, Intel Corporation (with Apple Inc. named as a real party in interest), and counsel of record are PTAB counsel, not local district‑court counsel. There is no "local counsel" role here, and Intel was not a party to the underlying S.D. Cal./ITC actions (Qualcomm Inc. v. Apple Inc., No. 3:17‑cv‑02398; Inv. No. 337‑TA‑1093), so no district‑court plaintiff's counsel exists to identify.

Counsel of record for Intel (petitioner)

All Intel-side counsel were from Wilmer Cutler Pickering Hale and Dorr LLP. There was no in‑house Intel attorney of record and no separate counsel appearing for Apple in this particular IPR — third‑party PTAB data for the companion ’356 petitions records the entry "On behalf of Apple and Intel — Counsel: WilmerHale."

Attorney Role Firm / Office Note
Gregory H. Lantier Lead appellate counsel (argued for Intel at the Federal Circuit) WilmerHale, Washington, DC Partner and Co‑Chair of the firm's Post‑Grant Proceedings Group; argued the Federal Circuit appeal in these consolidated appeals; briefed Bowman v. Monsanto and Stanford v. Roche at the Supreme Court; adjunct professor of patent litigation, American University Washington College of Law.
Benjamin S. Fernandez PTAB lead/registered counsel; signed the Notice of Appeal WilmerHale, Denver, CO (1225 17th St., Suite 2600); Reg. No. 55,172 Registered practitioner who executed Intel's Sept. 4, 2020 Notice of Appeal in this IPR; later designated lead counsel for Intel in other PTAB matters (e.g., IPR2021‑01229, Intel v. VLSI).
David L. Cavanaugh PTAB backup/lead counsel; on appellate briefs WilmerHale, Washington, DC (1875 Pennsylvania Ave. NW); Reg. No. 36,476; previously listed at the firm's Palo Alto office Long‑standing Intel PTAB counsel; listed as backup counsel on Intel petitions (e.g., IPR2018‑01295) and as first backup to Fernandez in later Intel IPRs.
Thomas Saunders Appellate counsel of record (Federal Circuit) WilmerHale, Washington, DC (per slip‑op listing) Member of WilmerHale's appellate and Supreme Court practice; listed on the Federal Circuit's counsel line for these appeals. (Individual credentials not independently verified in this search.)
Claire Hyungyo Chung Appellate counsel of record (Federal Circuit) WilmerHale, Washington, DC (per slip‑op listing) Listed on the Federal Circuit's counsel line for these appeals. (Role/firm office not independently verified beyond the opinion caption.)
James M. Lyons Appellate counsel of record (Federal Circuit) WilmerHale, Boston, MA Listed on the Federal Circuit's counsel line for these appeals. (Role not independently verified beyond the opinion caption.)

What is verified vs. inferred

  • Verified: The Federal Circuit's March 24, 2022 nonprecedential disposition in Nos. 2020‑2239, 2020‑2294 states: "GREGORY H. LANTIER, Wilmer Cutler Pickering Hale and Dorr LLP, Washington, DC, argued for appellant. Also represented by DAVID LANGDON CAVANAUGH, CLAIRE HYUNGYO CHUNG, THOMAS SAUNDERS; BENJAMIN S. FERNANDEZ, Denver, CO; JAMES M. LYONS, Boston, MA." That is the definitive counsel list for the appeal.
  • Verified: The Sept. 4, 2020 Petitioner's Notice of Appeal in IPR2019‑00047 is "Filed on behalf of Intel Corporation By: Benjamin S. Fernandez … Registration No. 55,172," with service on Jones Day (Qualcomm's counsel).
  • Inferred / not directly retrieved: I could not pull the Paper 3 mandatory notices or the PTAB docket's lead/backup counsel table for IPR2019‑00047 itself (PTAB filings sit behind PTACTS/Docket Alarm paywalls). The precise PTAB-level designation of lead vs. backup counsel in this IPR is therefore inferred from the Notice of Appeal signature, the Federal Circuit appearances, and Intel's counsel designations in the four companion ’356 IPRs (IPR2019‑00048, ‑00049, ‑00128, ‑00129), where WilmerHale (Fernandez/Cavanaugh) appears as petitioner's counsel.
  • Nothing is sealed in a way that hides counsel — the limitation is document access, not sealing. Note the proceeding is no longer live: the Board's Final Written Decision (Paper 34/35, July 8, 2020) held no challenged claims unpatentable, and the Federal Circuit dismissed Intel's appeal and Qualcomm's cross‑appeal as moot on March 24, 2022, because the claims had already been held unpatentable in the appeal from IPR2019‑00048 (Intel Corp. v. Qualcomm Inc., No. 20‑2092 (Fed. Cir. 2022)). The relevant appeal expired on June 22, 2022.
  • Intel in‑house counsel: none identified as counsel of record; WilmerHale was outside counsel throughout.

Opposing side (for context)

Qualcomm's Patent Owner counsel was Jones Day — David B. Cochran, Matthew W. Johnson, Joseph M. Sauer, Joshua R. Nightingale, David M. Maiorana, Thomas W. Ritchie, William E. Devitt (per the certificate of service), with Israel Sasha Mayergoyz (Chicago) arguing the cross‑appeal.

Sources

Defendant representatives

Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

I'll research Qualcomm's (patent owner / "defendant-side") counsel of record in this IPR. Note up front: since IPR2019‑00047 is a PTAB proceeding, the "defendant-side" party is the patent owner, Qualcomm Incorporated — there is no district-court defendant or local counsel here.

The Federal Circuit's counsel line differs from the certificate-of-service list I noted earlier — I'll flag that. Now let me pin down the PTAB-level power of attorney / lead and backup counsel designations.

Now the PTAB-level designation in this specific IPR (power of attorney / mandatory notices). Let me try the docket and related filings.

Threshold correction on the party posture (again, because it drives the whole answer)

IPR2019‑00047 is a PTAB inter partes review, not a district-court infringement suit. The "defendant-side" party is therefore the patent owner, Qualcomm Incorporated — there is no defendant, no local counsel, and no PACER docket for this case number. Qualcomm's counsel of record are Jones Day PTAB/appellate counsel. (Qualcomm was the plaintiff in the underlying S.D. Cal. and ITC actions against Apple, where Jones Day also represented it — so the same firm appears on both sides of the party alignment depending on which proceeding you look at.)

Correction / flag on the previously generated section

The prior section listed Qualcomm's counsel as "David B. Cochran, Matthew W. Johnson, Joseph M. Sauer, Joshua R. Nightingale, David M. Maiorana, Thomas W. Ritchie, William E. Devitt (per the certificate of service), with Israel Sasha Mayergoyz (Chicago) arguing the cross-appeal." Two refinements are needed:

  1. That seven-name list is the certificate-of-service list on Intel's Notice of Appeal — i.e., everyone served, not necessarily the Federal Circuit appearance list.
  2. The Federal Circuit's own counsel line for Nos. 2020‑2239/2020‑2294 is different and is the definitive appellate roster: "ISRAEL SASHA MAYERGOYZ, Jones Day, Chicago, IL, argued for cross-appellant. Also represented by THOMAS W. RITCHIE; ROBERT BREETZ, DAVID B. COCHRAN, JOSEPH M. SAUER, Cleveland, OH; KELLY HOLT, New York, NY; JENNIFER L. SWIZE, Washington, DC." So Breetz, Holt, and Swize appear only in the appellate line, while Johnson, Nightingale, Maiorana, and Devitt appear only on the service list. I treat both as Qualcomm's Jones Day team but distinguish the two sources below.

Counsel of record for Qualcomm Incorporated (patent owner)

Attorney Role Firm / office Note
Israel Sasha ("Sasha") Mayergoyz Lead trial/appellate counsel; argued for Qualcomm as cross-appellant at the Federal Circuit (Mar. 24, 2022) Jones Day, Chicago, IL (77 W. Wacker Dr.) Jones Day's principal Qualcomm PTAB/Federal Circuit advocate in the ’356 and ’949 campaigns; also argued Qualcomm Inc. v. Intel Corp., Nos. 20‑1587 et al. (Fed. Cir. Oct. 13, 2021).
David B. Cochran Lead PTAB counsel / appellate Jones Day, Cleveland, OH Long-time Jones Day patent litigator and Qualcomm relationship partner; on the Federal Circuit line here and in the companion Qualcomm v. Intel appeal. (Individual credentials not independently re-verified in this search.)
Joseph M. Sauer PTAB / appellate counsel Jones Day, Cleveland, OH On both the Federal Circuit line here and the companion Qualcomm appeals.
Robert Breetz Appellate counsel of record Jones Day, Cleveland, OH Appears on the Federal Circuit line for this appeal and for 20‑1587. Not on the Notice of Appeal service list.
Thomas W. Ritchie PTAB / appellate counsel; registered patent practitioner (Reg. No. 65,505) Jones Day, Chicago, IL The only Qualcomm-side attorney whose registration number I could confirm (from a Jones Day Qualcomm power of attorney in a parallel IPR).
Kelly Holt Appellate counsel of record Jones Day, New York, NY Appears only on the Federal Circuit line. (Role/credentials not independently verified.)
Jennifer L. Swize Appellate counsel of record Jones Day, Washington, DC Argued Qualcomm Inc. v. Apple Inc., No. 20‑1560 (Fed. Cir. Feb. 9, 2021) for Qualcomm; listed here on the cross-appeal.
Matthew W. Johnson PTAB counsel (service list) Jones Day, Pittsburgh, PA (per 20‑1587 counsel line) On the certificate of service for Intel's Notice of Appeal; not on the 2022 Federal Circuit line.
Joshua R. Nightingale PTAB counsel (service list) Jones Day, Pittsburgh, PA Same — service list only.
David M. Maiorana PTAB counsel (service list) Jones Day, Cleveland, OH (per 20‑1587 counsel line) Same — service list only.
William E. Devitt PTAB counsel (service list) Jones Day; office not verified Same — service list only.

In-house counsel: I found no Qualcomm in-house attorney identified as counsel of record in this IPR in any retrievable source. Qualcomm's legal department is in San Diego, but I will not name individuals without a source.

What is verified vs. not

  • Verified: Jones Day represented Qualcomm in all five ’356 IPRs, including IPR2019‑00047 (Jones Day's own case summary: "Intel Corporation, et al. v. Qualcomm Incorporated, IPR Nos. 2019‑00047, ‑00048, ‑00049, ‑00128, ‑00129 (PTAB)").
  • Verified: The Federal Circuit's March 24, 2022 nonprecedential disposition names Mayergoyz as arguing for the cross-appellant and lists Ritchie, Breetz, Cochran, Sauer (Cleveland), Holt (New York), and Swize (Washington, DC).
  • Verified: The Sept. 4, 2020 Notice of Appeal certificate of service lists the seven Jones Day attorneys at @jonesday.com (Cochran, Johnson, Sauer, Nightingale, Maiorana, Ritchie, Devitt).
  • Not retrieved: The Paper 4 Patent Owner's Mandatory Notices and any power of attorney in IPR2019‑00047 itself, which would give the formal PTAB lead/backup designation and registration numbers for each attorney. PTAB filings sit behind PTACTS/Docket Alarm access limits, so I could not confirm which Jones Day attorney was designated lead counsel at the Board (as opposed to on appeal) — the likely candidate is Cochran, with Mayergoyz/Ritchie/Sauer as backup, but that is inference, not verified. Treat "lead counsel" in the table above as "lead in practice/appellate," not as a confirmed PTAB designation.
  • Registration numbers: only Ritchie's (65,505) is confirmed, from a Jones Day Qualcomm power of attorney in a parallel IPR (IPR2019‑00276).
  • Nothing is sealed as to counsel. The limitation is document access, not sealing. Note also the proceeding is no longer live: the Board's Final Written Decision (July 8, 2020) found no challenged claims unpatentable, and the Federal Circuit dismissed Intel's appeal and Qualcomm's cross-appeal as moot on March 24, 2022, because the claims had already been held unpatentable in the appeal from IPR2019‑00048 (Intel Corp. v. Qualcomm Inc., No. 20‑2092 (Fed. Cir. 2022)).

Sources