Welcome to Skilled in the Art. I'm Law.com IP reporter Scott Graham. Remember all of that patent litigation between Apple and Qualcomm before U.S. District Judge Gonzalo Curiel? Qualcomm just said “never mind”— it's going to give Apple the freedom to infringe the nine disputed patents. Meanwhile, the ALJ presiding over one of Qualcomm's actions at the ITC retired from the agency earlier this month, but has now returned. ¯\_(ツ)_/¯ I've got details below.

As always, you can email me your thoughts and feedback and follow me on Twitter.

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Qualcomm Won't Contest Apple Patent Claims

Have you ever seen one of those hockey fights where two scary guys just circle each other for a while and then the referees break it up, no punches thrown?

I'm starting to think that's what we're going to get out of the Apple-Qualcomm litigation—at least the San Diego branch of it.

Apple kicked it off by instructing its contract manufacturers to stop paying royalties on Qualcomm chip technology used in iPhones. Apple then sued for a declaratory judgment of non-infringement, invalidity, patent exhaustion and a FRAND royalty rate on nine Qualcomm patents. Qualcomm counterclaimed for a FRAND declaration on its entire SEP portfolio, sought $4 billion a year in interim payments while the case is litigated, and sued Apple in the International Trade Commission.

U.S. District Judge Gonzalo Curiel rejected the interim payments last year, so Qualcomm's been pushing to get to trial as quickly as possible. But the company seems to be getting cold feet as the trial date draws nearer—or perhaps it just prefers to focus on the ITC actions, the antitrust cases before U.S. District Judge Lucy Koh, or its German dispute with Apple.

I reported last spring that Qualcomm was trying to withdraw its FRAND counterclaim from Curiel's court. Now Qualcomm has given Apple and its contract manufacturers a covenant not to sue for infringement of the nine patents identified by Apple, according to a September 14 filing. That renders “moot and non-justiciable” all of Apple's claims regarding infringement, invalidity and FRAND royalties, according to Qualcomm's motion, which is signed by Cravath, Swaine & Moore partner Evan Chesler.

It also moots Apple's contention that the Supreme Court's recent Lexmark decisionon patent exhaustion renders all of Qualcomm's chip patents unenforceable, Chesler contends. “Once the threat of a patent infringement action is removed—as Qualcomm has done by covenanting not to sue on the patents-in-suit—there can be no controversy regarding a potential exhaustion defense to patent infringement,” he writes.

If Chesler is right, it appears this will leave only a handful of Apple claims and Qualcomm counterclaims over contracts, monopolization and unfair competition.

Qualcomm says it's forswearing the nine patents because of a recent ruling by U.S. Magistrate Judge Mitchell Dembin striking Qualcomm's expert testimony on infringement, and because deciding the patent claims “will not further resolution of the parties' broader licensing dispute concerning Qualcomm's portfolio of more than 130,000 issued patents and patent applications worldwide.”

Dembin ruled earlier this month that Qualcomm made a tactical decision not to serve infringement contentions so it could avoid certain discovery obligations. Therefore, it was barred from presenting expert testimony on infringement. “Rules are rules and tactical decisions have consequences,” Dembin wrote.

ITC Welcomes Back Judge Pender

Administrative Law Judge Thomas Pender is presiding over one of two ITC actions in which Qualcomm is seeking to exclude imports of Apple products. As widely reported in June, he said it was “very likely there will be a violation found.”

For the last couple of weeks, though, Pender has been out of the picture.

The ITC announced in a brief Sept. 4 order that that the ALJ had retired, and that the Qualcomm case would be reassigned to Chief ALJ Charles Bullock. The announcement seemed to catch some veteran ITC attorneys by surprise, though others said it had been telegraphed in recent months.

Then on Monday, Bullock announced that Pender “has returned to the commission” to finish up some investigations. That includes Qualcomm's, which is due for an initial determination by the end of this month. “This investigation is therefore being reassigned to him,” Bullock wrote in an equally brief order.

Once final, Pender's retirement will create the first judicial vacancy at the ITC since the Trump administration's July executive order excepting ALJs from the Office of Personnel Management's competitive service examination.

Over seven years at the ITC Pender has presided over his fair share of high-profile disputes. He once ordered a ban on some Samsung devices that infringed Apple patents. He also excluded infringing materials used in cutting-edge lithium-ion batteries, dubbing it “the most interesting case I've ever seen.”

Lisa Kattan, the chair of Baker Botts' ITC practice, said she will miss appearing before the always well-prepared judge. “He understood that easy cases don't go to trial,” she said, so “he was willing to get into the weeds with the attorneys.”

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And Now for Another Point of View

I begin every newsletter by noting that I welcome your thoughts and feedback. I got some constructive comments from two people whose opinions I respect following a Skilled in the Art item last week.

I had said I thought U.S. District Judge Rodney Gilstrap got it right when he ruled that BMW has a “regular and established place of business” in the Eastern District of Texas, even if its auto dealerships there are independently operated.

Villanova law professor Michael Risch makes the point that the issue of manufacturers and independent dealers was the subject of multiple regional circuit decisions before the Federal Circuit changed the venue rules and the Supreme Court changed them back again. “We had [28 U.S.C.] 1400 for nearly 100 years before the change, and there was a rich body of law on this question that lawyers (and judges or maybe their clerks) have apparently forgotten how to search for,” Risch noted.

I imagine Judge Gilstrap would say his reasoning stemmed in part from the integration of BMW's website with the local dealerships. All of the regional circuit precedents predate the Internet and e-commerce. Still, BMW's lawyers at Finnegan, Henderson, Farabow, Garrett & Dunner raised some of the regional circuit precedents in their motion, and it would have been helpful if Judge Gilstrap had explained his thinking on them.

Lucasfilm Stomps on Gaming App

The makers of a gaming app that traded on a slice of Star Wars history have failed Lucasfilm for the last time.

U.S. District Judge Richard Seeborg entered a stipulated judgment and a permanent injunction Monday that forbids Ren Ventures from using Sabacc or any other Lucasfilm trademark in its apps. The company also agreed to pay $470,000 and surrender its Sabacc trademark.

As my ALM colleague Ross Todd explains, Sabacc is a blackjack-line game where players try to get a hand as close as possible to positive or negative 23 without going over. It was known only among the most hardcore “Star Wars” fans until it was featured in a scene in this year's “Solo: A Star Wars Story.”

Lucasfilm was represented by Fabien Thayamballi and Cynthia Arato of Shapiro Arato. Ren Venutures was represented by Andrews Kurth.

Rimon on the Rise

Rimon has landed an eight-member IP team led by Karineh Khachatourian from Duane Morris.

“I have been working in Big Law for 20 years,” Khachatourian told my colleague Xiumei Dong. “I wanted to do something different and I wanted a platform that I believed might be more aligned with the Silicon Valley culture and with my clients.”

Khachatourian joined Duane Morris from K&L Gates in 2013. She's also done stints Mintz, Levin, Cohn, Ferris, Glovsky and Popeo and Buchanan Ingersoll & Rooney. Coming with her to Rimon are partners Amir Tabarrok, David Xue and Justin Zahrt, along with associate Nikolaus Woloszczuk and three staff members.

Generational Change at Glaser Weil

As I reported on Monday, veteran IP litigator Adrian Pruetz has retired from Glaser Weil Fink Howard Avchen & Shapiro, where she was chair of the IP group. Two other Glaser partners—Pruetz's daughter, Erica Van Loon, and Andrew Choung—have joined the Los Angeles office of Lathrop Gage.

Van Loon said she and Choung are excited to join a national firm, and credited Nancy Sher Cohen, the partner in charge of Lathrop's L.A. office, of smoothing their transition. Lathrop “has a very deep IP bench,” Van Loon said. “It's just not anchored on the West Coast.”