The Board incorrectly interpreted Section 311(b)’s “prior art consisting of patents or printed publications” to encompass applicant admitted prior art, but such art may be relevant as an admission.

Concluding that the Patent Trial and Appeal Board incorrectly considered applicant admitted prior art (AAPA) in its review of a Qualcomm’s integrated circuit patent in a challenge brought by Apple, the U.S. Court of Appeals for the Federal Circuit has vacated the Board’s finding of unpatentability based on obviousness. The Board incorrectly interpreted “prior art consisting of patents or printed publications” in Section 311(b) of the Patent Act to encompass applicant admitted prior art (AAPA). The Federal Circuit held, however, that AAPA can be permissible in assessing whether the patent’s claims would have been obvious in an inter partes review proceeding as an admission in a patent’s specification, and remanded to the Board on that issue (Qualcomm Inc. v. Apple Inc., February 1, 2022, Chen, R.).

Case date: 01 February 2022
Case number: No. 20-1558
Court: United States Court of Appeals, Federal Circuit

A full summary of this case has been published on Kluwer IP Law.


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