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Explore the latest in patent, trademark, and copyright cases on the Merchant & Gould LLP blog. Stay informed with expert insights on intellectual property law updates.

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Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="https://www.cafc.uscourts.gov/opinions-orders/23-1208.OPINION.4-23-2025_2503159.pdf"><em>Qualcomm Inc. v. Apple Inc.</em>, Nos. 2023-1208, ‑1209 (Apr. 23, 2025)</a>, reversing the Patent Trial and Appeal Board’s final written decision that multiple claims of Qualcomm’s U.S. Patent No. 8,063,674 are unpatentable as obvious.

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Apple filed IPR petitions challenging the claims of the ’674 patent on two grounds. Ground 2 relied on Applicant Admitted Prior Art (AAPA) in combination with other prior art patents. AAPA refers to statements, descriptions, or figures within a patent’s own specification that acknowledge certain subject matter as being part of the prior art. The Board instituted review and in a final written decision found the claims unpatentable under Ground 2. In its decision, the Board concluded that the use of AAPA complied with 35 U.S.C. § 311(b), which limits the grounds on which patent claims can be challenged in IPRs.

On a first appeal filed by Qualcomm, the Federal Circuit vacated and remanded, clarifying that AAPA is not “prior art consisting of patents or printed publications” under § 311(b) and directing the Board to determine whether AAPA impermissibly formed “the basis” of the ground on which the Board found the challenged claims unpatentable.

On remand, the Board concluded that AAPA did not form the basis of Ground 2 because it was used "in combination" with prior art patents, thus complying with § 311(b). On that basis, the Board again found the challenged claims of the ’674 patent unpatentable as obvious. Qualcomm appealed.

The Federal Circuit reversed. First, it rejected Apple’s argument that § 314(d) barred review, explaining that Qualcomm’s challenge concerned “the manner in which the agency’s review proceeds once instituted,” not the threshold institution decision. Turning to the merits, the Court held that the Board misinterpreted § 311(b): the statute’s plain language limits the basis of an IPR ground exclusively to prior-art patents or printed publications, and AAPA—by definition—cannot be part of that basis even when paired with qualifying references. The Board therefore erred by applying a categorical “in-combination” rule and by disregarding Apple’s express identification of AAPA as part of the basis of Ground 2. Because the only sustained ground violated § 311(b), the Court reversed the Board’s unpatentability findings and reinstated the challenged claims.

CAFC Reverses PTAB’s AAPA-Based Obviousness Ruling in Qualcomm v. Apple

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