Statement that Patents Are “Potentially Essential to a Standard” Does Not Create Substantial Controversy

The court granted defendant's motion to dismiss nine patents-in-suit added in plaintiff's first amended complaint for lack of subject matter jurisdiction. "[Defendant] has never accused [plaintiff] of infringing the Additional Patents-in-Suit. [Defendant] asserts that the 1,975 page list provided to [plaintiff] . . . is simply an identification of the universe of patents previously declared as potentially essential to a standard. [Defendant] has not stated that the Additional Patents-in-Suit are 'actually essential' to a standard practiced by [plaintiff]. . . . [Plaintiff] has not sufficiently pled that the nine Additional Patents-in-Suit were part of the 'hundreds' of claim charts prepared by [defendant] in the licensing negotiations. . . . [Defendant] may have participated in a similar 'palpable bravura' in suggesting to [plaintiff] to review its entire portfolio. Nonetheless . . . [defendant] has not made specific allegations of infringement as to the Additional Patents-in-Suit, nor has [it] presented claim charts relating to these patents."

Apple Inc. v. Qualcomm Incorporated, 3-17-cv-00108 (CASD November 8, 2017, Order) (Curiel, USDJ)