Qualcomm Inc. v. Apple Inc., et al., Nos. 2023-1208, -1209 (Fed. Cir. (PTAB) Apr. 23, 2025). Opinion by Reyna, joined by Lourie and Prost.
Qualcomm owns a patent related to integrated circuit devices using multiple power supplies. Apple filed two IPR petitions challenging the patentability of some claims. Both petitions presented the same two grounds of unpatentability, with Apple identifying “Ground 2” as applicant-admitted prior art (AAPA) in view of certain prior art references.
In response, Qualcomm argued that Ground 2 was not permitted under 35 U.S.C. § 311(b), which provides that IPR petitions may request cancellation of claims “only on the basis of prior art consisting of patents or printed publications.” After an intervening appeal and remand, the Patent Trial and Appeal Board determined that the AAPA did not form the basis of Ground 2 and thus Apple complied with § 311(b). The Board also found that the challenged claims were unpatentable based on Ground 2. Qualcomm appealed.
The Federal Circuit began by addressing Apple’s argument that Qualcomm’s appeal is barred from judicial review under 35 U.S.C. § 314(d), which states that the Director’s decision whether to institute an IPR “shall be final and nonappealable.” The Federal Circuit held that Qualcomm’s appeal is reviewable because it “does not challenge the Board’s ‘threshold’ decision to institute the IPRs.” Instead, it “challenges the Board’s determination of unpatentability on Ground 2, with respect to the use of AAPA in reaching that determination.” Accordingly, “Qualcomm’s appeal falls outside the criteria for unreviewability under § 314(d).”
The court next addressed Qualcomm’s argument that the Board erred in its interpretation of § 311(b). The Federal Circuit agreed, holding that “the Board’s interpretation of § 311(b) contravened the plain meaning of the statute.” The court explained that “because the basis can only include prior art consisting of patents or printed publications, and because AAPA is not a prior art patent or printed publication … , it follows that the plain meaning of § 311(b) does not permit the basis to include AAPA.”
In so ruling, the court recognized 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, without contravening § 311(b),” but that was not the situation here. Even though the Board determined that the AAPA did not form the basis of Ground 2, the Federal Circuit held that the Board was incorrect because Apple’s petitions expressly stated that AAPA is included in the basis of Ground 2. And the Federal Circuit ruled that “Apple should be held to the phrasing of its petition[s] because an IPR petitioner is the ‘master of its own petition.’”
The Federal Circuit therefore reversed, stating that “the Board should not have considered Ground 2 in its final written decision and should not have determined that the challenged claims are unpatentable as obvious under Ground 2.” Instead, “the Board should have determined that the challenged claims are not unpatentable.”