The Federal Circuit recently reversed a PTAB determination on remand that a patent was obvious over applicant admitted prior art (“AAPA”) in combination with prior art patents, holding that expressly designating AAPA as a “basis” for a ground is improper under 35 U.S.C. § 311(b). In doing so, the Court rejected the PTAB’s “blanket rule” that “AAPA used in combination with prior art patents or printed publications under § 311(b) is ipso facto not the basis or part of the basis of a ground.” Ultimately, while the case clarifies that expressly listing AAPA in an IPR ground is improper, the precise line between proper and improper uses of AAPA in other instances remains unclear.
Qualcomm owns U.S. Patent No. 8,063,674 directed to integrated circuit devices. Figure 1 of the ’674 Patent is labeled “PRIOR ART” and depicts a circuit described as “currently in use.” In two IPR petitions challenging the ’674 Patent, Apple identified the Figure 1 device as “AAPA” and relied on it in combination with prior art patents in its obviousness arguments. Notably, in tables identifying the IPR grounds, the petitions expressly listed the AAPA, along with the prior art patents, under the heading “Basis for Rejection.”
In response to the petitions, Qualcomm argued that Apple’s AAPA grounds are deficient under § 311(b), which states that petitioners may request to cancel claims “only on the basis of prior art consisting of patents or printed publications.” According to Qualcomm, AAPA from the challenged patent is not a “prior art patent or printed publication” and thus Apple’s reliance on it as a “basis” for certain grounds was improper. The Board disagreed, explaining in a final written decision that “[b]ecause AAPA is admitted to be prior art and is found in the ’674 patent, it can be used [as a basis] to challenge the claims.” The Board then determined that the challenged claims were unpatentable in view of the AAPA grounds.
On appeal (“Qualcomm I”), the Federal Circuit vacated the PTAB’s decision, holding that AAPA cannot form the “basis” of an IPR ground because it “is not contained in a document that is a prior art patent or prior art printed publication.” The Court thus remanded the case for the PTAB to interpret the meaning of “basis” in § 311(b) and to determine whether Apple’s AAPA formed such a basis in this case.
Notably—between Qualcomm I and the PTAB’s remand decision—then-USPTO Director Kathi Vidal issued guidance concerning the role of AAPA in IPR proceedings. There, the USPTO interpreted § 311(b) to require an “in combination” rule, whereby AAPA relied on “in combination with reliance on one or more prior art patents or printed publications …do[es] not form ‘the basis’ of the ground.” The guidance also provided examples of proper uses of AAPA in IPRs, such as to show “general” or “background” knowledge in the art.
On remand, the PTAB interpreted and applied § 311(b) consistent with the USPTO’s guidance, determining that Apple’s AAPA was not “the basis” of any ground because it was asserted “in combination” with a patent or printed publication. Accordingly, the PTAB again deemed the claims unpatentable based on Apple’s AAPA grounds, and Qualcomm appealed.
On appeal of the remand decision, the Federal Circuit held that the “in combination” rule endorsed by the USPTO and applied by the PTAB was incorrect because it “contravened the plain meaning of the statute.” According to the Court, the “question is whether a petitioner has used AAPA as the basis, or part of the basis, of a ground—not whether the request relies on AAPA in combination with prior art patents or printed publications.” It further reasoned that allowing petitioners to comply with § 311(b) simply by adding references to a ground that is otherwise based on AAPA “would permit use of AAPA beyond what is permitted under the plain language of the statute.” However, the Court also “recognize[d] that there are instances in which a petition may rely in part on AAPA, such as to indicate the general knowledge of a person of ordinary skill in the art, without contravening § 311(b).”
Applying those standards to the case at hand, the Court held that Apple’s use of AAPA was improper because the “petitions clearly designate AAPA as included in the basis” of its grounds, for example by expressly listing “AAPA” under the heading “Basis for Rejection.” Apple argued that such a holding “prioritizes labels over substance” because it fails to assess how the AAPA is actually used in the grounds. But the Court rejected that argument because “an IPR petitioner is the ‘master of its own petition’” and “should be held to [its] phrasing.” In short, “[d]ue to the unequivocal use of ‘basis’ in Apple’s petitions,” the Court “need not consider whether, in substance, [the ground] included AAPA in its basis.” Perhaps acknowledging the uncertainty of the proper role of AAPA following its decision, the Court stated that “future cases may require the PTO and this court to consider the substance of a petition.” That is, the Court recognized that petitioners may rely on AAPA in some instances, but the decision does not provide guidance on how to distinguish permissible reliance from impermissible reliance, except where petitioners explicitly list AAPA as part of a “basis.”
Practice Tip: Petitioners in IPR proceedings should take care when citing to applicant admitted prior art. Treating AAPA as if it was another reference—and identifying it as a “basis” for the petition’s grounds—will not be permitted. Instead, petitioners should consider using AAPA in a supporting role, such as evidence of what a person of ordinary skill in the art would know and understand.
Qualcomm Inc. v. Apple Inc., 134 F.4th 1355 (Fed. Cir. 2025)