Applicant Admitted Prior Art Cannot Be A "Basis For" An IPR Challenge

In a decision dated February 1, 2022, the Federal Circuit confirmed that applicant admitted prior art (AAPA) may not form the basis of a validity challenge in an inter partes review (IPR).¹ The decision arose out of two IPRs filed by Apple challenging the validity of a Qualcomm patent directed to integrated circuit devices including "level shifters" that communicate between input/output devices and core devices.² The ground for invalidity on which Apple prevailed before the Board relied on AAPA (Fig. 1 of the patent and its accompanying description) in view of a prior art reference called Majcherczak.³

In the IPRs, Qualcomm did not contest that the combination of AAPA and the relied-upon prior art taught every element of the challenged claims.  Qualcomm argued only that Apple's validity challenge was flawed because patent owner admissions could not be relied upon in an IPR.  The Board disagreed, reasoning that, under 35 U.S.C. § 311(b), "prior art consisting