A weekly summary of the precedential patent-related opinions
issued by the Court of Appeals for the Federal Circuit and the
opinions designated precedential or informative by the Patent Trial
and Appeal Board.
Qualcomm Inc. v. Apple Inc., et al.,
Nos. 2020-1558, -1559 (Fed. Cir. (PTAB) Feb. 1, 2022). Opinion by
Chen, joined by Taranto and Bryson.
Qualcomm appealed two related IPR decisions finding several
claims of a Qualcomm patent unpatentable under 35 U.S.C. §
103. In reaching its patentability finding, the Patent Trial and
Appeal Board had relied in part on applicant admitted prior art
(AAPA).
Qualcomm argued that the Board's reliance on AAPA runs
afoul of 35 U.S.C. § 311(b), which limits an IPR petitioner to
challenge claims as unpatentable “only on a ground that could
be raised under section 102 or 103 and only on the basis of prior
art consisting of patents or printed publications.” The
Federal Circuit agreed with Qualcomm, ruling that AAPA does
