Qualcomm Inc. v. Apple Inc., Appeal Nos. 2023-1208, -1209 (Fed. Cir. Apr. 23, 2025)

For a second time in this case, the Federal Circuit considered the proper role of “Applicant Admitted Prior Art” in an inter partes review. For the second time in this case, the Court reversed the Board’s application of such art.

In 2018, Apple filed a petition for inter partes review of one of Qualcomm’s patents. For one of the grounds, Apple relied on certain admissions made in Qualcomm’s patent about prior-art solutions to the problem. Apple combined these admissions with two prior-art references. The Board found the claim invalid based on this asserted ground, and Qualcomm appealed, arguing that applicant-admitted prior art (“AAPA”) is not a “patent or printed publication,” as required for prior art to be considered in an inter partes review pursuant to § 311(b). The Federal Circuit reversed, holding that the Board “incorrectly interpreted § 311(b)’s ‘prior art consisting of patents or printed publications’ to encompass AAPA contained in the challenged patent.” The Court did clarify that “the use of AAPA can be permissible in an inter partes review.” This was all decided in the Court’s February 2022 decision, Qualcomm I, which we wrote up here.

On remand, the Board again concluded the claims were unpatentable based on the same ground, this time applying new guidance provided by the Director. That guidance, which was updated based on the decision in Qualcomm I, suggested that applicant-admitted prior art may be used in combination with other, qualifying prior art, such as to provide a skilled artisan’s general or background knowledge of the field, without treating it as “the basis” of the petition in violation of § 311(b). The Board found that the applicant-admitted prior art in Apple’s petition had not been “the basis” of the petitioned grounds under this guidance.

On appeal the second time, the Federal Circuit again reversed. First, the Court considered whether the issue was appealable. Apple argued that the appeal was barred under Section 314(d), which prohibits review of director decisions to institute review. The Court surveyed Supreme Court and Federal Circuit precedent about application of Section 314(d) and concluded that appellate review was appropriate here. “Qualcomm’s challenge does not pertain to the Board’s determination about a run-of-the-mill statutory provision of a procedural nature regarding the threshold decision of whether to institute an IPR. Rather, . . . Qualcomm’s appeal presents a question about ‘the manner in which the agency’s review proceeds once instituted.’ ”

Turning to the merits of the appeal, Qualcomm admitted that applicant-admitted prior art cannot form the basis of an IPR ground for review. The Court agreed and held that the Board’s contrary interpretation of § 311(b) contravened the plain meaning of the statute. The “basis” of an IPR may only include prior art consisting of patents or printed publications. Because admissions are not patents or printed publications, they may not form the basis of an IPR. The Board’s conclusion that they may be used in combination with other, qualifying prior art was therefore erroneous.

The Court did hold “that there are instances in which a petition may rely in part on AAPA, such as to indicate the general knowledge of a person of ordinary skill in the art…” But they cannot be “the basis” of the ground for review.

Finally, the Court considered whether the Board had improperly violated § 311(b) by relying on AAPA as the basis for review in this case, and concluded that it had. In particular, the petitions admitted that the “Basis” of the ground for review was “AAPA in view of Majcherczak” (and a different prior-art reference, as relevant). The Court agreed that “Apple should be held to the phrasing of its petition because an IPR petitioner is the  ‘master of its own petition.’ ”

Because applicant-admitted prior art had been the “basis” of Apple’s ground for review, and was not allowed for this purpose, the Court reversed.

The opinion can be found here.

By Nika Aldrich

This article summarizes aspects of the law and does not constitute legal advice. For legal advice with regard to your situation, you should contact an attorney.