Qualcomm v. Apple (Fed. Cir., April 23, 2025) 2023-1208

This is an opinion from the United States Court of Appeals for the Federal Circuit concerning an appeal involving Qualcomm Incorporated and Apple Inc., with the United States Patent and Trademark Office as an intervenor. The core issue revolves around Apple's challenge to a Qualcomm patent (U.S. Patent No. 8,063,674) in an inter partes review (IPR) proceeding. Specifically, the dispute focuses on whether Applicant Admitted Prior Art (AAPA) can form "the basis" of a ground for challenging a patent's validity under 35 U.S.C. § 311(b), which limits such grounds to "prior art consisting of patents or printed publications." The court examines the Patent Trial and Appeal Board's prior decisions, PTO guidance memoranda, and relevant case law, ultimately finding that the Board erred in its interpretation and application of the statute by concluding that AAPA used in combination with other prior art does not form the basis of the ground.

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