February 10, 2022
Authored and Edited by Angeline L. Premraj; Kara Specht; Esther H. Lim; Elizabeth D. Ferrill
In Qualcomm Incorporated v. Apple Inc., Nos. 20-1558, 20-1559 (Fed. Cir. Feb. 1, 2022), the Federal Circuit vacated and remanded decisions by the Patent Trial and Appeal Board (“the Board”) finding several claims of a Qualcomm’s patent unpatentable under 35 U.S.C. § 103.
The Federal Circuit held that the Board erroneously considered applicant admitted prior art (“AAPA”) to be “prior art consisting of patents or printed publications” as a “basis” in its inter partes review of the patent under 35 U.S.C. § 311(b). Specifically, the Federal Circuit relied on the legislative history of § 311(b), which indicated that to form the “basis” of a ground of inter partes review, the patent or printed publication must itself be a document that is prior art to the challenged patent. In this case, the Federal Circuit found that the AAPA could not be the “basis” because the AAPA is not a document separate from the challenged patent. However, the Court did not foreclose the consideration of AAPA entirely. While not as a “basis,” the Court noted, based on Federal Circuit precedent and legislative intent, that the AAPA may still be considered to some extent in an inter partes review.
Patent Trial and Appeal Board (PTAB), Obviousness (35 USC § 103), United States Court of Appeals for the Federal Circuit (CAFC)
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