Case: 20-1558 Document: 82 Page: 1 Filed: 02/01/2022
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`
`
`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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`QUALCOMM INCORPORATED v. APPLE INC.
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`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.
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`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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`QUALCOMM INCORPORATED v. APPLE INC.
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`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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`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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`QUALCOMM INCORPORATED v. APPLE INC.
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`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 review2 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
`Steinacker3, 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
`
`IPR2018-01315 and IPR2018-01316.
`2
`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.
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`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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`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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`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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`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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`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).
`judicial
`
`This understanding aligns with prior
`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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`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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`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
`in the
` While, under § 311(b), AAPA contained
`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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`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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`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
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`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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`Case: 20-1558 Document: 82 Page: 17 Filed: 02/01/2022
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`QUALCOMM INCORPORATED v. APPLE INC.
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`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.
`
`

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`Case: 20-1558 Document: 82 Page: 18 Filed: 02/01/2022
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`18
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`QUALCOMM INCORPORATED v. APPLE INC.
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`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.
`
`