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, argued 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, Washington, 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 Qualcomm’s U.S. Patent No. 8,063,674 (’674 patent) unpatentable 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. Qualcomm argues the Board’s reliance on AAPA runs afoul of 

35 U.S.C. § 311(b), which limits an inter partes review petitioner 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 publications.” § 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, modern integrated circuits often contain multiple networks operating 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 simultaneously 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 shifters 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 poweron/off-control (POC) signal internally that instructs the input/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 input/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 transistors 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 configured to detect a power state of said core network; 

processing circuitry coupled to said up/down detector 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 circuits configured to provide feedback signals to adjust a current capacity of said up/down detector;

at least one first transistor coupled to a second supply 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 transistor 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 between 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 review2 based 

on the same two grounds but each challenging different 

sets of claims in the ’674 patent. In ground 1, Apple challenged the claims as unpatentable under § 103 in view of 

Steinacker3, Doyle,4 and Park.5 In its final written decision, 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 Leakage 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 motivation 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 constitutionality 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 Guerrero10 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 supporting 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 verbis, and statements explanatory thereof appellants have 

conceded what is to be considered as prior art in determining 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. 

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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: 17 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 challenged claims of the ’674 patent unpatentable and remand 

for further proceedings consistent with this opinion.

VACATED AND REMANDED

COSTS

Costs to Qualcomm.

Case: 20-1558 Document: 82 Page: 18 Filed: 02/01/2022