Cases & Deals

Qualcomm wins second time against Apple at Federal Circuit on key issue of statutory interpretation of America Invents Act

Client(s) Qualcomm Incorporated

Jones Day won a second Federal Circuit appeal on behalf of Qualcomm Incorporated to reinstate a Qualcomm patent and end years-long litigation against Apple. In both appeals, Jones Day convinced the Federal Circuit to adopt Qualcomm's statutory interpretation of the America Invents Act ("AIA") and undo Patent Office decisions canceling the patent.

The case began when Apple filed petitions for inter partes review (IPR) challenging Qualcomm's patent and, in one of its grounds, relied in part on statements in the Qualcomm patent itself (so-called "applicant admitted prior art" or "AAPA"). After the U.S. Patent Trial and Appeal Board (PTAB) adopted the ground to cancel the patent, Qualcomm appealed to the Federal Circuit, challenging the ground as contrary to the AIA provision that limits "the basis" of an IPR ground to "prior art consisting of patents or printed publications." In a precedential decision in 2022, the Federal Circuit adopted Qualcomm's interpretation, holding that AAPA is outside the scope of "prior art consisting of patents," and remanded the case for further consideration. On remand, the PTAB again viewed the ground as within the scope of the AIA and adopted the ground to cancel the patent.

In this second appeal, in April 2025, the Federal Circuit issued another precedential decision in which it again adopted Qualcomm's statutory interpretation. This time, the issue concerned the statute's meaning of "the basis." Agreeing with Qualcomm, the Federal Circuit held that Apple improperly used AAPA as "the basis" for its ground. In adopting Qualcomm's interpretation, the Federal Circuit expressly rejected the contrary interpretation contained in a guidance document from the Patent Office's Director. The Federal Circuit's reversal of the PTAB decision reinstates Qualcomm's patent.

Qualcomm Incorporated v. Apple Inc., No. 23-1208 (Fed. Cir.); Apple Inc. v. Qualcomm Incorporated, IPR 2018-01315 (PTAB)