Qualcomm wins Federal Circuit appeal on statutory interpretation that "applicant admitted prior art" cannot form the basis of an IPR

Client(s) Qualcomm Incorporated

On behalf of Qualcomm Incorporated, Jones Day won a Federal Circuit appeal on a novel issue of statutory interpretation of the America Invents Act (AIA). In Section 311(b), the AIA limits inter partes reviews (IPR") to challenging patent claims as anticipated or obvious and “only on the basis of prior art consisting of patents or printed publications.” In the IPR underlying this appeal, Apple challenged Qualcomm's patent by raising a ground of unpatentability that relied in part on statements in the challenged patent itself (so-called “applicant admitted prior art” or “AAPA”). Qualcomm argued that Apple's use of “AAPA” was outside the scope of Section 311(b) and thus impermissible. The U.S. Patent Trial and Appeal Board (PTAB) disagreed, finding that the statutory language “prior art consisting of patents” includes AAPA because it is “prior art” contained in a patent. Proceeding to the merits, the PTAB found the patent claims unpatentable.

On appeal, Qualcomm pressed its statutory interpretation argument, and in a precedential decision, the Federal Circuit agreed with Qualcomm and rejected Apple's and the PTAB's interpretation, vacating the PTAB's unpatentability determination.

Qualcomm Incorporated v. Apple Inc., No. 20-1558 (Fed. Cir.); Apple Inc. v. Qualcomm Incorporated, IPR No. 2018-01315 (PTAB)