Fresh From the Bench: Latest Precedential Patent Case

CASE OF THE WEEK

Qualcomm Inc. v. Apple Inc., Appeal Nos. 2023-1208, -1209 (Fed. Cir. Apr. 23, 2025)

For a second time in this case, the Federal Circuit considered the proper role of “Applicant Admitted Prior Art” in an inter partes review. For the second time in this case, the Court reversed the Board’s application of such art.

In 2018, Apple filed a petition for inter partes review of one of Qualcomm’s patents. For one of the grounds, Apple relied on certain admissions made in Qualcomm’s patent about prior-art solutions to the problem. Apple combined these admissions with two prior-art references. The Board found the claim invalid based on this asserted ground, and Qualcomm appealed, arguing that applicant-admitted prior art (“AAPA”) is not a “patent or printed publication,” as required for prior art to be considered in an inter partes review pursuant to § 311(b). The Federal Circuit reversed, holding that the Board “incorrectly interpreted § 311(b)’s ‘prior art consisting of patents or printed publications’ to encompass AAPA contained in the challenged patent.” The Court did clarify that “the use of AAPA can be permissible in an inter partes review.”

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Editors:

Nika Aldrich, IP Litigation Group Leader, Schwabe

Jason A. Wrubleski, Shareholder