Authored by: Jeremy J. Gustrowsky
In a significant decision for patent law, the Federal Circuit has clarified how “applicant admitted prior art” (AAPA) can—and cannot—be used in inter partes review (IPR) proceedings. The case involved a dispute between Qualcomm Incorporated and Apple Inc. over U.S. Patent No. 8,063,674, which relates to integrated circuit devices with multiple power supplies. Apple challenged the patent at the Patent Trial and Appeal Board (PTAB), relying in part on statements in Qualcomm’s own patent about prior art (the AAPA), combined with other published patents.
The heart of the issue was whether Apple could use Qualcomm’s admissions about prior art as the “basis” for challenging the patent, when those admissions were combined with other patents or printed publications. The PTAB had previously decided that this was allowed, interpreting the law to mean that as long as AAPA was used together with other published prior art, it didn’t violate the rules. However, the Federal Circuit disagreed, pointing to the clear language of the law: IPR challenges can only be based on “prior art consisting of patents or printed publications.” Because AAPA is not itself a patent or printed publication, it cannot be the basis—or even part of the basis—of an IPR ground for unpatentability.
The court was especially critical of Apple’s petitions, which explicitly listed AAPA as the “Basis” for one of its grounds for challenging the patent. The Federal Circuit said that this clear labeling was enough to show a violation of the law, regardless of whether AAPA was used alone or in combination with other prior art. The court also made clear that while AAPA can be used to show what was generally known in the field, it cannot serve as the foundation for an IPR challenge.
As a result, the Federal Circuit reversed the PTAB’s decision, holding that the challenged claims of Qualcomm’s patent were not proven unpatentable based on the improper use of AAPA. This decision reinforces stricter limits on what can be used as the basis for challenging patents in IPR proceedings and serves as a warning to parties to be careful in how they frame these challenges at the PTO.