Qualcomm Incorporated v. Apple Inc. ( 2022 )

Case: 20-1558 Document: 82 Page: 1 Filed: 02/01/2022
United States Court of Appeals
for the Federal Circuit
______________________
QUALCOMM INCORPORATED,
Appellant
v.
APPLE INC.,
Appellee
ANDREW HIRSHFELD, PERFORMING THE
FUNCTIONS AND DUTIES OF THE UNDER
SECRETARY OF COMMERCE FOR
INTELLECTUAL PROPERTY AND DIRECTOR OF
THE UNITED STATES PATENT AND TRADEMARK
OFFICE,
Intervenor
______________________
2020-1558, 2020-1559
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2018-
01315, IPR2018-01316.
______________________
Decided: February 1, 2022
______________________
JENNIFER L. SWIZE, Jones Day, Washington, DC, ar-
gued for appellant. Also represented by ROBERT BREETZ,
DAVID B. COCHRAN, DAVID MICHAEL MAIORANA, JOSEPH M.
SAUER, Cleveland, OH; MATTHEW JOHNSON, JOSHUA R.
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2 QUALCOMM INCORPORATED v. APPLE INC.
NIGHTINGALE, Pittsburgh, PA; ISRAEL SASHA MAYERGOYZ,
Chicago, IL.
LAUREN ANN DEGNAN, Fish & Richardson PC, Wash-
ington, DC, argued for appellee. Also represented by
MICHAEL JOHN BALLANCO, CHRISTOPHER DRYER; WHITNEY
REICHEL, Boston, MA.
MAUREEN DONOVAN QUELER, Office of the Solicitor,
United States Patent and Trademark Office, Alexandria,
VA, argued for intervenor. Also represented by THOMAS W.
KRAUSE, ROBERT J. MCMANUS, FARHEENA YASMEEN
RASHEED.
______________________
Before TARANTO, BRYSON, and CHEN, Circuit Judges.
CHEN, Circuit Judge.
Qualcomm Inc. (Qualcomm) appeals from two related
inter partes review (IPR) decisions of the Patent Trial and
Appeal Board (Board) finding several claims of Qual-
comm’s U.S. Patent No. 8,063,674 (’674 patent) unpatenta-
ble under 35 U.S.C. § 103. 1 To reach its unpatentability
finding, the Board relied on a ground raised by Apple Inc.
(Apple) that relied in part on applicant admitted prior art
(AAPA)—here, statements in the challenged patent
1 Congress amended §§ 102 and 103 when it passed
the Leahy-Smith America Invents Act (AIA). Pub. L. No
112-29, §§ 3(b), 3(c), 125 Stat. 284, 287 (2011). Because the
application that led to the ’674 patent has never contained
a claim having an effective filing date on or after March 16,
2013 (the effective date of the statutory changes enacted in
2011), or a reference under 35 U.S.C. §§ 120, 121, or 365(c)
to any patent or patent application that ever contained
such a claim, the pre-AIA §§ 102 and 103 apply. Id. §
3(n)(1), 125 Stat. at 293.
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QUALCOMM INCORPORATED v. APPLE INC. 3
acknowledging that most of the limitations of the patent’s
claims were already known—and a prior art patent. Qual-
comm argues the Board’s reliance on AAPA runs afoul of
35 U.S.C. § 311(b), which limits an inter partes review pe-
titioner to challenge claims as unpatentable “only on a
ground that could be raised under section 102 or 103 and
only on the basis of prior art consisting of patents or printed
publications.” § 311(b) (emphasis added). Because we
agree with Qualcomm that the Board erred in concluding
that AAPA constitutes “prior art consisting of patents or
printed publications” under § 311(b), we vacate the Board’s
decision. We remand for the Board to determine whether
Apple’s petition nonetheless raises its § 103 challenge “on
the basis of prior art consisting of patents or printed publi-
cations.” § 311(b) (emphasis added).
BACKGROUND
A
Qualcomm owns the ’674 patent, which is directed to
integrated circuit devices with power detection circuits for
systems with multiple supply voltages. See ’674 patent at
Abstract, col. 1 ll. 6–8. According to the ’674 patent, mod-
ern integrated circuits often contain multiple networks op-
erating at different supply voltages. See id. at col. 1 ll. 22–
25. For example, a core logic network may operate at a
lower voltage, and an input/output network may simulta-
neously operate at a higher voltage. See id. Such a system
can save power by allowing the broader circuit to power
down a network, like the core logic network, when it is not
needed. See id. at col. 1 ll. 26–40.
The patent describes “level shifters” that communicate
between the input/output devices and the core devices. See
id. at col. 1 ll. 28–29. When the core devices are powered
down, the connection between the core and input/output
network through the level shifters can lead to problems.
One such problem is stray currents causing the level shift-
ers to trigger the input/output devices for transmission
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4 QUALCOMM INCORPORATED v. APPLE INC.
resulting in erroneous output signals from the circuit. See
id. at col. 1 ll. 29–40.
The ’674 patent describes a prior art method to remedy
the stray current problem. The Background states that
power-up/down detectors can be used to generate a power-
on/off-control (POC) signal internally that instructs the in-
put/output devices when the core devices are shut down.
See id. at col. 1 ll. 55–58. Figure 1 of the patent depicts a
“prior art” “standard POC system” with a power-up/down
detector 100:
Id. at Figure 1.
The patent asserts that there are problems with the
prior art solution in Figure 1. For example, when the in-
put/output power supply 104 is on and the core power is off,
powering up the core results in “a period in which all three
transistors [M1-M3] within power up/down detector 100
are on,” causing “a significant amount of current to flow
from [input/output] power supply 104 to ground.” Id. at col.
2 ll. 21–29. The ’674 patent recognizes that “decreas[ing]
the sizes of the transistors M1-M3” can physically limit this
“glitch current” or leakage but notes that smaller transis-
tors may reduce detection sensitivity or result in “longer
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QUALCOMM INCORPORATED v. APPLE INC. 5
processing time for power-up/down events.” Id. at col. 2 ll.
31–39; see also id. at col. 2 l. 63–col. 3 l. 11.
The ’674 patent avoids these problems by adding a
feedback network to increase detection speed. See id. at
col. 6 ll. 25–28. Specifically, as depicted in Figure 4, the
’674 patent includes power-up transistor M8. Transistor
M8 transitions from on to off during power-up and from off
to on during power-down. See id. at col. 6 ll. 12–18, 21–28.
When M8 is off, the current capacity of the power-up/down
detector is reduced. When M8 is on, the power-up/down
detector has increased current capacity resulting in
quicker detection of the core powering down. See id.
Claims 1, 2, 5–9, 12, 13, and 16–22 of the ’674 patent
are at issue on appeal. Claim 1, reproduced below, is
illustrative of the claimed invention:
1. A multiple supply voltage device comprising:
a core network operative at a first supply voltage;
and
a control network coupled to said core network
wherein said control network is configured to
transmit a control signal, said control network
comprising: an up/down (up/down) detector config-
ured to detect a power state of said core network;
processing circuitry coupled to said up/down detec-
tor and configured to generate said control signal
based on said power state;
one or more feedback circuits coupled to said
up/down detector, said one or more feedback cir-
cuits configured to provide feedback signals to ad-
just a current capacity of said up/down detector;
at least one first transistor coupled to a second sup-
ply voltage, the at least one more first transistor
being configured to switch on when said first
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6 QUALCOMM INCORPORATED v. APPLE INC.
supply voltage is powered down and to switch off
when said first supply voltage is powered on;
at least one second transistor coupled in series with
the at least one first transistor and coupled to said
first supply voltage, the at least one second transis-
tor being configured to switch on when said first
supply voltage is powered on and to switch off when
said first supply voltage is powered down;
at least one third transistor coupled in series be-
tween the at least one first transistor and the at
least one second transistor.
’674 patent at claim 1.
B
Apple filed two petitions for inter partes review 2 based
on the same two grounds but each challenging different
sets of claims in the ’674 patent. In ground 1, Apple chal-
lenged the claims as unpatentable under § 103 in view of
Steinacker 3, Doyle, 4 and Park. 5 In its final written deci-
sion, the Board found that Apple had not proven with this
ground the unpatentability of the challenged claims.
Apple’s second ground relied on AAPA—Figure 1 and
its accompanying description in the ’674 patent—in view of
Majcherczak. 6 Like the ’674 patent, Majcherczak relates
to “integrated circuit[s] using at least two power supply
2 IPR2018-01315 and IPR2018-01316.
3 U.S. Patent No. 7,279,943.
4 U.S. Patent No. 4,717,836.
5 J. C. Park and V. J. Mooney III, Sleepy Stack Leak-
age Reduction, 14 IEEE Transactions on Very Large Scale
Integration (VLSI) Systems 11, 1250–63 (2006) (J.A. 1247–
60).
6 U.S. Patent Application Publication No.
2002/0163364.
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QUALCOMM INCORPORATED v. APPLE INC. 7
voltages.” Majcherczak ¶ 1. Majcherczak discloses a
voltage detection device that detects, among other things,
when the core voltage is powered down. Apple argued that
a skilled artisan would have found it obvious to integrate
Majcherczak’s feedback transistor into the POC system
described as prior art by the ’674 patent, as shown below:
Qualcomm conceded that the combination of AAPA and
Majcherczak teaches each element of the challenged
claims, see Apple Inc. v. Qualcomm Inc., IPR2018-01315, -
01316, 2020 Pat. App. LEXIS 5250, *28 (P.T.A.B. Jan. 3,
2020) (Board Op.); J.A. 385–86, but challenged Apple’s use
of AAPA. Qualcomm argued that such patent owner
admissions cannot be used to challenge the validity of a
patent in inter partes review. See Board Op. at *15–17; J.A.
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8 QUALCOMM INCORPORATED v. APPLE INC.
403. 7 The Board disagreed. See Board Op. at *18–19
(“Because AAPA is admitted to be prior art and is found in
the ’674 patent, it can be used to challenge the claims in an
inter partes review.”). Underpinning the Board’s analysis
was its conclusion that, under 35 U.S.C. § 311(b), “prior art
consisting of patents or printed publications” includes
AAPA because it is prior art contained in a patent. See id.
at *19. Having decided that Apple’s use of AAPA was
proper under the statute, the Board found that the AAPA
with Majcherczak rendered the challenged claims
unpatentable as obvious.
Qualcomm timely appeals. We have jurisdiction under
28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
This appeal concerns the use of AAPA in inter partes
review. 8 Qualcomm, Apple, and the United States Patent
and Trademark Office (PTO) each offer competing views of
the propriety of AAPA’s role in inter partes review and
differing interpretations of the phrase “prior art consisting
of patents or printed publications” in § 311(b).
Qualcomm initially argued that AAPA may not be
considered in inter partes review. See Appellant’s Br. 20
(“[A] purported admission in the patent that is the subject
[of] an inter partes review cannot be used to challenge
claims in the IPR.”). Qualcomm explained that § 311(b)
7 Qualcomm also challenged Apple’s alleged motiva-
tion to combine Majcherczak with AAPA. See Board Op. at
*33. Qualcomm does not raise this challenge on appeal.
8 Qualcomm initially raised a challenge to the con-
stitutionality of the Board, see Appellant’s Br. 34–35, but
after the Supreme Court issued its decision in United
States v. Arthrex, Inc., 141 S. Ct. 1970 (2021), Qualcomm
withdrew its request for relief on that basis, see ECF No.
70.
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QUALCOMM INCORPORATED v. APPLE INC. 9
requires any ground in an inter partes review to be based
only on prior art patents or prior art printed publications.
See id. at 24. Finding no support in § 311(b) for the use of
AAPA, Qualcomm posited that the statute precludes any
and all use of a patent owner’s admissions in inter partes
review. See id. at 24–25. Qualcomm, however, softened its
position in reply, acknowledging that “general knowledge
and non-Section 311(b) art [e.g., AAPA] may have a role to
play in IPR proceedings,” Appellant’s Reply Br. 15, but
Qualcomm maintained its position that AAPA may not
form “the basis” of a ground in an inter partes review. See
id. at 14–15.
According to Apple, Qualcomm’s theory impermissibly
rewrites “prior art consisting of patents or printed
publications” as “prior-art patents” or “prior-art
publications.” See Appellee’s Br. at 27. Apple read § 311(b)
to permit the use of any “prior art” “consisting of patents or
printed publications.” See id. at 24–25. In other words,
Apple argued that any “prior art”—including AAPA—that
is contained in any patent or printed publication,
regardless of whether the document itself is prior art, can
be used as a basis for a challenge in inter partes review.
The PTO, for its part, asked us to remand so the Board
may apply the Director’s guidance on the “Treatment of
Statements of the Applicant in the Challenged Patent in
Inter Partes Reviews Under § 311(b)” (Guidance). 9 See
PTO Br. 8–9; see also J.A. 4530–38 (Guidance) The
Guidance agrees with Qualcomm that AAPA does not fall
within “prior art consisting of patents or printed
publications” under § 311(b). See Guidance at 3–4. Yet the
Guidance reads our caselaw to permit the use of AAPA in
inter partes review as evidence of the general knowledge of
a skilled artisan. See id. at 4–5. As the Guidance
9 The Director issued the Guidance on August 18,
2020, after the Board’s final written decisions in this case.
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10 QUALCOMM INCORPORATED v. APPLE INC.
understands permissible uses of that knowledge to include
supplying a missing claim limitation or supporting a
motivation to combine, it concludes that AAPA may
likewise be used for these purposes. See id. at 6–7. The
PTO, however, stops short of taking a position as to
whether Apple’s reliance on AAPA in this case is
impermissible, because, as argued by Qualcomm, the
AAPA in this case plays such a large role in the validity
challenge that it forms “the basis” of the ground. The PTO
urges us to remand that inquiry to allow Board to address
that question in the first instance.
A
The parties’ main argument on appeal focuses on
whether AAPA constitutes “prior art consisting of patents
or printed publications” under § 311(b) such that it may
form “the basis” of a ground in inter partes review. We hold
that it does not.
Our analysis begins with Section 311(b) of the Patent
Act:
Scope.—
A petitioner in an inter partes review may request
to cancel as unpatentable 1 or more claims of a
patent only on a ground that could be raised under
section 102 or 103 and only on the basis of prior art
consisting of patents or printed publications.
The language of § 311(b) limits “the basis” of any “ground”
in an inter partes review to “prior art consisting of patents
or printed publications.”
We agree with Qualcomm and the PTO that the
“patents or printed publications” that form the “basis” of a
ground for inter partes review must themselves be prior art
to the challenged patent. That conclusion excludes any
descriptions of the prior art contained in the challenged
patent. This interpretation is consistent with prior judicial
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QUALCOMM INCORPORATED v. APPLE INC. 11
interpretations of the statute and represents a more
natural reading of § 311(b).
Both the Supreme Court and this court have previously
understood the “patents and printed publications”
referenced in § 311(b) to themselves be prior art. See
Return Mail, Inc. v. U.S. Postal Serv., 139 S. Ct. 1853, 1860
(2019) (“First, the ‘inter partes review’ provision permits ‘a
person’ other than the patent owner to petition for the
review and cancellation of a patent on the grounds that the
invention lacks novelty or nonobviousness in light of
‘patents or printed publications’ existing at the time of the
patent application.” (emphasis added) (quoting § 311(b));
Regents of the Univ. of Minn. v. LSI Corp., 926 F.3d 1327,
1335 (Fed. Cir. 2019) (“Before IPR can be instituted, a
person must file a petition challenging the validity of one
or more patent claims under § 102 or § 103 on the basis of
prior art patents or printed publications.” (emphasis
added)), cert. denied, 140 S. Ct. 908 (2020).
This understanding aligns with prior judicial
interpretations of identical language—“prior art consisting
of patents or printed publications”—in a similar statute, 35
U.S.C. § 301(a), as excluding patents which themselves are
not prior art. See In re Lonardo, 119 F.3d 960, 966 (Fed.
Cir. 1997). In Lonardo, the parties disputed whether
obviousness-type double patenting based on a non-prior art
patent was available as a challenge in ex parte
reexamination. See id. at 965. Lonardo held that it was
permissible for the challenger to rely on a non-prior art
patent in ex parte reexamination under § 303(a), not
§ 301(a), because § 303(a) permits the Director to institute
a reexamination after “consideration of other patents or
printed publications.” See id. at 966 (quoting § 303(a))
(emphasis added). While Lonardo did not directly address
AAPA, it distinguished § 303(a) from § 301(a) by noting
that the former “is not specifically limited to prior art
patents or printed publications,” and referred to the latter
as describing “prior art submitted by a third party.” See id.
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12 QUALCOMM INCORPORATED v. APPLE INC.
at 966 (emphasis added). Other cases reflect Lonardo’s
understanding of the meaning of “prior art consisting of
patents or printed publications” in § 301(a) as referring to
prior art documents. See e.g., Return Mail, 139 S. Ct. at
1859 (noting that § 301(a) permits any person at any time
to cite to the Patent Office certain prior art that may “bea[r]
on the patentability of any claim of a particular patent”);
Mikkelsen Graphic Eng’g, Inc. v. Zund Am., Inc., 541 F.
App’x 964, 973–74 (Fed. Cir. 2013) (stating that § 301(a)
limits “reexamination requests to arguments based on
prior art patents or printed publications”); In re NTP, Inc.,
654 F.3d 1268, 1276 (Fed. Cir. 2011) (“During
reexamination, the examiner reviews the claims in view of
various prior art patents and printed publications.”); In re
Swanson, 540 F.3d 1368, 1375 (Fed. Cir. 2008) (“Any
person may file a request for an ex parte reexamination of
an issued patent based on prior art patents or printed
publications.”); In re Freeman, 30 F.3d 1459, 1468 (Fed.
Cir. 1994) (“The reexamination statute provides that
anyone at any time may request reexamination of any
claim of a patent based upon prior art patents and printed
publications.” (citing 35 U.S.C. § 301)).
Neither party argues that Congress, in enacting the
America Invents Act, 10 intended a different meaning of
“prior art consisting of patents or printed publications” in
§ 311(b) than that of § 301(a). We agree with Apple that,
“[w]hen Congress enacted the ‘prior art consisting of
patents or printed publications’ proviso for IPRs in section
311(b), it is presumed to have done so with reference to the
same specialized provision in the reexamination statute.”
Appellee’s Br. 38 (citing Reno v. Koray, 515 U.S. 50, 57
(1995)). Congress is also presumed to be aware of judicial
decisions interpreting statutory language. See Guerrero-
10 The AIA created inter partes reviews and enacted
the language codified at § 311(b). AIA § 6(a).
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QUALCOMM INCORPORATED v. APPLE INC. 13
Lasprilla v. Barr, 140 S. Ct. 1062, 1072 (2020). Given
Congress’s use of language identical to § 301(a), and the
judicial interpretations of that statute at the time the AIA
was enacted, the logical extension is that the patents and
printed publications referenced in § 311(b) must
themselves be prior art to the challenged patent. In other
words, § 311(b) does not permit AAPA in this case to be the
basis of a ground in an inter partes review, because it is not
contained in a document that is a prior art patent or prior
art printed publication.
B
While, under § 311(b), AAPA contained in the
challenged patent is not “prior art consisting of patents or
printed publications,” it does not follow that AAPA is
categorically excluded from an inter partes review. Indeed,
Qualcomm concedes that our precedent permits
consideration of AAPA, at least to some extent, to challenge
patent claims in an inter partes review. See Appellant’s
Reply Br. 15.
We have held that “it is appropriate to rely on
admissions in a patent’s specification when assessing
whether that patent’s claims would have been obvious” in
an inter partes review proceeding. Koninklijke Philips N.V.
v. Google LLC, 948 F.3d 1330, 1339 (Fed. Cir. 2020) (citing
PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d
1342, 1362 (Fed. Cir. 2007) (“Admissions in the
specification regarding the prior art are binding on the
patentee for purposes of a later inquiry into
obviousness.”)). 11
11 As recognized in PharmaStem, our precedent
treats AAPA as binding on the patentee. See Constant v.
Advanced Micro-Devices, Inc., 848 F.2d 1560, 1570 (Fed.
Cir. 1998) (“A statement in a patent that something is in
the prior art is binding on the applicant and patentee for
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14 QUALCOMM INCORPORATED v. APPLE INC.
That is because a petitioner may rely on evidence
beyond prior art documents in an inter partes review, even
if such evidence itself may not qualify as the “basis” for a
ground set forth in a petition. See 35 U.S.C. § 312(a)(3)(B)
(permitting the use of “affidavits or declarations of support-
ing evidence and opinions, if the petitioner relies on expert
opinions”); § 314(a) (requiring the Director to consider “the
information presented in the petition” when determining
whether to institute inter partes review) (emphasis added);
§ 316(a)(3) (requiring the Director “establish[] procedures
for the submission of supplemental information after the
petition is filed.”); Yeda Rsch. v. Mylan Pharms. Inc., 906
F.3d 1031, 1041 (Fed. Cir. 2018) (affirming PTO’s reliance
on a non-prior art document in inter partes review for
limited purposes). Indeed, Koninklijke Philips specifically
rejected an argument that the general knowledge of a
skilled artisan may not be relied on in an inter partes
review because it does not constitute “prior art consisting
of patents or printed publications” under § 311(b). See 948
F.3d at 1337 (“Regardless of the tribunal, the inquiry into
whether any ‘differences’ between the invention and the
prior art would have rendered the invention obvious to a
skilled artisan necessarily depends on such artisan’s
determinations of anticipation and obviousness.”); In re
Fout, 675 F.2d 297, 300 (CCPA 1982) (“Valid prior art may
be created by the admissions of the parties.”); In re Nomiya,
509 F.2d 566, 571 (CCPA 1975) (“By filing an application
containing Figs. 1 and 2, labeled prior art, ipsissimis ver-
bis, and statements explanatory thereof appellants have
conceded what is to be considered as prior art in determin-
ing obviousness of their improvement.”); In re Rishoi, 197
F.2d 342, 343–44 (CCPA 1952) (affirming the “refusal to
allow [a] claim [] based upon an unequivocal admission in
appellants’ specification of what was old and well known in
the art”).
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QUALCOMM INCORPORATED v. APPLE INC. 15
knowledge.”). In other words, the assessment of a claim’s
patentability is inextricably tied to a skilled artisan’s
knowledge and skill level.
As a patentee’s admissions about the scope and content
of the prior art provide a factual foundation as to what a
skilled artisan would have known at the time of invention,
Randal Manufacturing v. Rea, 733 F.3d 1355, 1362–63
(Fed. Cir. 2013), it follows that AAPA may be used in
similar ways in an inter partes review, see McCoy v. Heal
Sys., LLC, 850 F. App’x 785, 789 (Fed. Cir. 2021) (“The
Board did not err by accepting the specification’s own
assertions of what is well known in the art . . . . By
characterizing certain parts as conventional in the
specification, the patentee effectively admits that such
things would be known to a POSA.”). Such uses include,
for example, furnishing a motivation to combine, see
Randal Manufacturing, 733 F.3d at 1363, or supplying a
missing claim limitation, Koninklijke Philips, 948 F.3d at
1337–38. Thus, even though evidence such as expert
testimony and party admissions are not themselves prior
art references, they are permissible evidence in an inter
partes review for establishing the background knowledge
possessed by a person of ordinary skill in the art.
Moreover, the use of AAPA in an inter partes review
proceeding is consistent with our understanding that
Congress sought to create a streamlined administrative
proceeding that avoided some of the more challenging
types of prior art identified in 35 U.S.C. § 102, such as
commercial sales and public uses, by restricting the “prior
art” which may form a basis of a ground to prior art
documents. In OddzOn Prods., Inc. v. Just Toys, Inc., 122
F.3d 1396, 1401–02 (Fed. Cir. 1997), we held that “prior
art,” as referenced in 35 U.S.C. § 103, includes § 102(f), in
addition to subsections (a), (b), (e), and (g), which “are
clearly prior art provisions.” We observed that § 102(a) and
(b) identify, among other things, “prior patents and
publications” as prior art. Id. As for other types of prior
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16 QUALCOMM INCORPORATED v. APPLE INC.
art identified in § 102, we have explained, in the context of
the reexamination statute, that “questions of public use
and on sale were explicitly excluded by statute from those
issues on which reexamination could be obtained.” Quad
Envtl. Techs. Corp. v. Union Sanitary Dist., 946 F.2d 870,
875 (Fed. Cir. 1991). That is so because “[t]he
congressional purpose in restricting reexamination to
printed documents, 35 U.S.C. § 301, was to provide a
cheaper and less time-consuming alternative to challenge
patent validity on certain issues.” Id. at n.7 (citing H.R.
Rep. No. 1307 at 4). Holding a patentee to descriptions of
the prior art made in its specification does not implicate
the type of fact-intensive inquiries Congress was seeking
to avoid.
C
Having determined that (i) the Board incorrectly
interpreted § 311(b)’s “prior art consisting of patents or
printed publications” to encompass AAPA contained in the
challenged patent, but (ii) the use of AAPA can be
permissible in an inter partes review, the next contested
issue is whether AAPA improperly formed the “basis” of
Apple’s challenge. Because the Board did not address this
question in its final written decision, we remand to allow
the Board to address this issue in the first instance.
* * *
At bottom, Section 311 provides a limit on what prior
art can be the basis for an inter partes review challenge and
both the courts and the PTO must adhere to that limit. As
explained above, AAPA may not form the “basis” of a
ground in an inter partes review, and it is therefore
impermissible for a petition to challenge a patent relying
on solely AAPA without also relying on a prior art patent
or printed publication. Here, we remand to the Board to
determine whether Majcherczak forms the basis of Apple’s
challenge, or whether the validity challenge impermissibly
violated the statutory limit in Section 311.
Case: 20-1558 Document: 82 Page: 17 Filed: 02/01/2022
QUALCOMM INCORPORATED v. APPLE INC. 17
D
Finally, we reject Apple’s alternative ground for
affirmance (which the Board likewise rejected) asserting
the challenged claims are unpatentable based on the
combination of Steinacker and Doyle or the combination of
Steinacker, Doyle, and Park. Apple failed to show that the
Board abused its discretion in determining that Apple’s
proposed motivation to combine Steinacker and Doyle
based on “hysteresis” was untimely raised for the first time
on reply. See Intelligent Bio-Sys., Inc. v. Illumina
Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“It
is of the utmost importance that petitioners in IPR
proceedings adhere to the requirement that the initial
petition identify with particularity the evidence that
supports the grounds for the challenge to each claim.”). As
the Board correctly noted, Apple’s petition contained a
single paragraph discussing the motivation to combine
Doyle with Steinacker, focusing on Doyle’s relatively stable
trip point. See Board Op. at *66 (citing J.A. 224). Absent
from that paragraph, and the entire petition, is any
mention or argument related to hysteresis as a motivation
to combine these references. See J.A. 214–240. Thus,
Apple has failed to show that the Board’s decision to not
consider its hysteresis theory was legal error. See Henny
Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1330 (Fed.
Cir. 2019) (“Board did not abuse its discretion in holding
[Petitioner] to its word and disregarding its new theory
first raised in reply.”).
Moreover, the Board’s finding that Apple’s timely
raised motivations to combine Doyle with Steinacker were
insufficient to support an obviousness determination are
supported by substantial evidence. We see no reversible
error in the Board’s finding that Apple failed to explain
why a skilled artisan at the time of the invention would
have considered a relatively stable trip point important
enough to combine Doyle with Steinacker. See Board Op.
at *71–74.
Case: 20-1558 Document: 82 Page: 18 Filed: 02/01/2022
18 QUALCOMM INCORPORATED v. APPLE INC.
As we hold there was no error in the Board’s finding
that Apple made an insufficient showing of a motivation to
combine Doyle with Steinacker—a prerequisite to its
proposed three-way combination of Doyle with Steinacker
and with Park—we do not reach the Board’s determination
that Apple failed to sufficiently show that a skilled artisan
would be motivated to use the forced stack technique
described in Park with Doyle.
CONCLUSION
We have considered the parties remaining arguments
and find them unpersuasive. For the reasons set forth
above, we vacate the Board’s decisions finding the chal-
lenged claims of the ’674 patent unpatentable and remand
for further proceedings consistent with this opinion.
VACATED AND REMANDED
COSTS
Costs to Qualcomm.