IP Law Daily, PATENT—Fed. Cir.: Invalidation of Qualcomm’s integrated circuit device patent reversed on appeal, (Apr 24, 2025)

By Saurabh Kashyap, B.A., LL.B., LL.M.

PTAB erred by allowing a challenge based on the applicant's admitted prior art excluded under 35 U.S.C. § 311(b).

The Federal Circuit reversed a final written decision by the Patent Trial and Appeal Board that invalidated multiple claims of an integrated circuit device patent owned by Qualcomm on obviousness grounds, holding that the Board violated 35 U.S.C. § 311(b) by permitting Apple’s inter partes review challenge to rely on applicant admitted prior art (AAPA) as part of the basis for the asserted ground of unpatentability (Qualcomm Inc. v. Apple Inc., Nos. 23-1208, 23-1209 (Fed. Cir. Apr. 23, 2025)).

Background. The appellant, Qualcomm Incorporated, is a leading semiconductor and telecommunications equipment company that owns U.S. Patent No. 8,063,674 (the '674 patent) related to integrated circuit devices that operate using multiple supply voltages. The patent discloses systems using power-up/down detectors and feedback circuits to manage power transitions and avoid current leakage and erroneous signals between a device's core and I/O components during power cycling.

The appellee, Apple Inc., filed two inter partes review (IPR) petitions in 2018, challenging various claims of the ’674 patent on obviousness grounds under 35 U.S.C. § 103. Each petition asserted two grounds; the one at issue in the appeal—Ground 2—combined AAPA found in the ’674 patent (including its Figure 1 and introductory text) with prior art patent publications Majcherczak and Matthews. The Patent Trial and Appeal Board (PTAB) originally found that the use of AAPA complied with § 311(b), holding that AAPA could form “the basis” of an IPR ground because it appeared in a patent, and concluded that the challenged claims were unpatentable.

Qualcomm appealed, and in Qualcomm Inc. v. Apple Inc., 24 F.4th 1367 (Fed. Cir. 2022) (Qualcomm I), the Federal Circuit vacated the PTAB’s decision, holding that AAPA is not prior art “consisting of patents or printed publications” within the meaning of § 311(b). The court remanded the case for the Board to determine whether the AAPA formed the basis of Ground 2 in violation of the statute.

The ’674 patent. Claim 1 of the ’674 patent, which is representative, covers a “multiple supply voltage device” that includes a core network operating at a first supply voltage and a control network that generates signals based on the core’s power state. The claimed invention uses an up/down detector, feedback circuits to adjust current flow, and a series of transistors to manage transitions between powered and unpowered states. The patent seeks to avoid energy waste and signal integrity issues during shutdown periods.

The AAPA used in Apple’s petition included a diagram of a prior art circuit and textual description of conventional power-on/off control systems found in the ’674 patent itself.

PTAB’s decision on remand. Following remand, the Board reconsidered its treatment of Ground 2 in view of new guidance issued by the Director of the U.S. Patent and Trademark Office. The updated guidance permitted the use of AAPA to demonstrate the knowledge of a skilled artisan but not as "the basis" of a challenge under § 311(b) unless combined with patents or printed publications in a supporting role.

Adopting this “in combination” rule, the PTAB concluded in its November 2022 final written decision that Apple’s use of AAPA did not violate § 311(b) because the admitted prior art was combined with Majcherczak and Matthews. The Board found that the patents supplied the core teachings for the obviousness combination and that the AAPA merely filled in background knowledge.

Although the petitions labeled Ground 2’s “Basis” as “AAPA in view of Majcherczak” and in some claims “AAPA in view of Majcherczak and Matthews,” the Board reasoned that these statements were not determinative because the ground also included printed publication prior art.

Reviewability. Apple argued that Qualcomm’s challenge to the Board’s use of Ground 2 was barred by 35 U.S.C. § 314(d), which precludes judicial review of the decision to institute an IPR. The Federal Circuit rejected this argument, citing SAS Inst., Inc. v. Iancu, 584 U.S. 357 (2018), and holding that Qualcomm’s appeal concerned the manner in which the IPR was conducted—not the institution decision itself. The appellate court concluded that the PTAB’s application of § 311(b) was reviewable because it involved statutory limits on what can form the basis of an IPR ground.

Board’s statutory interpretation rejected. The court found that the Board’s interpretation of § 311(b) as permitting a ground to rely on AAPA “in combination with” prior art patents or printed publications was contrary to the statute’s plain meaning. Section 311(b) permits a petitioner to challenge claims “only on the basis of prior art consisting of patents or printed publications.” AAPA, being neither, cannot be part of the basis.

The appellate court reiterated its prior holding in Qualcomm I that while AAPA can be used to show a skilled artisan’s background knowledge, it may not itself serve as a ground for unpatentability. The PTAB’s “in combination” rule, the court concluded, improperly allowed petitioners to circumvent § 311(b)’s restrictions by blending AAPA with proper prior art and calling it compliant.

Ground 2 improperly relied on AAPA. The Federal Circuit also found that Apple’s own petitions explicitly identified AAPA as the basis of Ground 2, using phrases such as “AAPA in view of Majcherczak” in the summary tables of each petition. These statements, the court held, constituted an express designation of AAPA as a foundational reference for the challenge. Citing Intuitive Surgical, Inc. v. Ethicon LLC, 25 F.4th 1035 (Fed. Cir. 2022), the appellate court emphasized that petitioners are the “masters of their petitions” and will be held to their explicit representations.

The court declined to adopt a substance-over-form approach to determine whether AAPA was merely used as context or played a central role. Because Apple had plainly designated AAPA as part of the ground's basis and because § 311(b) prohibits such usage, the court concluded that the PTAB erred in considering Ground 2.

Consequences of the ruling. The PTAB had already rejected Apple’s Ground 1 and relied solely on Ground 2 to invalidate the claims. Because Ground 2 violated § 311(b), no valid ground remained to support a finding of unpatentability. The Federal Circuit reversed the Board’s decision in full, reinstating the challenged claims of the ’674 patent.

The court noted that future cases may require more nuanced determinations of whether AAPA plays a subordinate or foundational role in IPR petitions but held that no such analysis was needed here in light of Apple's express admissions.

Conclusion. Thus, the Federal Circuit reversed the PTAB's invalidation of Qualcomm's patent claims, holding that Apple's inter partes review challenge impermissibly relied on the applicant's admitted prior art as the basis of its obviousness ground. The appellate court clarified that § 311(b) sets a clear statutory limit on what may form the foundation of an IPR petition and warned against attempts to circumvent that limit through blended references.

The Case is Nos. 23-1208 and 23-1209.

Judge: Lourie, A.

Attorneys: Jennifer L. Swize (Jones Day) for Qualcomm Inc. Lauren Ann Degnan (Fish & Richardson PC) for Apple Inc. Maureen D. Queler, Office of the Solicitor, for USPTO.

Companies: Qualcomm Inc.; Apple Inc.

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