QUALCOMM INCORPORATED v. APPLE INC.

Qualcomm appeals from two related IPR decisions of the Board finding several claims of Qualcomm’s U.S. Patent No. 8,063,674 unpatentable under 35 U.S.C. § 103. To reach its unpatentability finding, the Board relied on a ground raised by Apple that relied in part on statements in the challenged patent acknowledging that most of the limitations of the patent’s claims were already known—and a prior art patent. Qualcomm argues, and the CAFC agrees, that the Board’s reliance on applicant admitted prior art (“AAPA”) runs afoul of 35 U.S.C. § 311(b), which limits an IPR petitioner to challenge claims as unpatentable “only on the basis of prior art consisting of patents or printed publications.” Finding that the Board erred in concluding that AAPA constitutes “prior art consisting of patents or printed publications” under § 311(b), the CAFC vacates the Board’s decision and remands for the Board to determine whether Apple’s petition nonetheless raises its § 103 challenge “on the basis of prior art consisting of patents or printed publications” or whether the validity challenge impermissibly violated the statutory limit in Section 311.

VIEW DECISION