Qualcomm Incorporated v. Apple Inc.

United States Court of Appeals
for the Federal Circuit
______________________
QUALCOMM INCORPORATED,
Appellant
v.
APPLE INC.,
Appellee
COKE MORGAN STEWART, ACTING UNDER
SECRETARY AND ACTING DIRECTOR OF THE
UNITED STATES PATENT AND TRADEMARK
OFFICE,
Intervenor
______________________
2023-1208, 2023-1209
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2018-
01315, IPR2018-01316.
______________________
Decided: April 23, 2025
______________________
J ENNIFER L. SWIZE, Jones Day, Washington, DC, ar-
gued for appellant. Also represented by ROBERT BREETZ,
D AVID B. C OCHRAN, Cleveland, OH; JOHN M ICHAEL
G RAVES , MATTHEW J. RUBENSTEIN, Minneapolis, MN;
I SRAEL SASHA MAYERGOYZ, Chicago, IL.
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QUALCOMM INCORPORATED v. APPLE INC. 2
L AUREN A NN D EGNAN, Fish & Richardson P.C., Wash-
ington, DC, argued for appellee. Also represented by
MICHAEL J OHN BALLANCO, CHRISTOPHER D RYER.
MAUREEN D ONOVAN Q UELER , Office of the Solicitor,
United States Patent and Trademark Office, Alexandria,
VA, argued for intervenor. Also represented by ROBERT J.
MCMANUS , BRIAN R ACILLA.
______________________
Before L OURIE, P ROST , and REYNA, Circuit Judges.
REYNA, Circuit Judge.
Qualcomm Incorporated appeals from the final written
decision on remand of the Patent Trial and Appeal Board.
Apple Inc. filed two petitions for inter partes review chal-
lenging as unpatentable as obvious various claims of U.S.
Patent No. 8,063,674, owned by Qualcomm. Each petition
asserted a similar pair of grounds, one of which used cer-
tain applicant admitted prior art. The Board initially de-
termined that the use of applicant admitted prior art in the
ground complied with 35 U.S.C. § 311(b). The Board
reached this determination because it concluded that, gen-
erally, applicant admitted prior art is “prior art consisting
of patents or printed publications,” which, under § 311(b),
are the “only” references that can form “the basis” of a
ground in a petition for inter partes review.
Qualcomm appealed, and this court held that the
Board misinterpreted § 311(b), because applicant admitted
prior art is not “prior art consisting of patents or printed
publications,” although it can be used in a petition for inter
partes review under particular circumstances. We thus va-
cated and remanded for the Board to determine whether
the applicant admitted prior art in Apple’s petitions formed
“the basis” of the ground at issue in violation of § 311(b).
On remand, the Board interpreted the statute and deter-
mined that the applicant admitted prior art did not form
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QUALCOMM INCORPORATED v. APPLE INC. 3
the basis of the ground. The Board thus concluded that the
ground complied with § 311(b). We hold that the Board
erred in its interpretation of § 311(b) and in its determina-
tion that the ground at issue complied with the statute. Ac-
cordingly, we reverse.
BACKGROUND
This appeal arises from petitions for inter partes review
(“IPR”) by Apple Inc. (“Apple”), challenging as unpatenta-
ble various claims of U.S. Patent No. 8,063,674 (“the ’674
patent”). The ’674 patent is owned by Qualcomm Incorpo-
rated (“Qualcomm”).
I. The ’674 Patent
The ’674 patent relates to integrated circuit devices us-
ing multiple power supplies. ’674 patent, 1:22–25. Accord-
ing to the ’674 patent, typically, these devices have one
lower-voltage power supply for “the internally operating or
core applications” and devices, and a “higher-voltage power
supply for I/O [‘Input/Output’] circuits and devices.” Id.
at 1:26–40. An integrated circuit device uses “lever shift-
ers” to “facilitate communication between the core and I/O
devices.” Id. at 1:28–29. Problems may arise when the core
devices are “powered down,” since “the I/O devices are con-
nected through level shifters.” Id. at 1:29–32. For in-
stance, while the integrated circuit device is powering
down, “stray currents” can inadvertently lead the level
shifters to “send a signal to the I/O devices,” which then
“transmit the erroneous signal into the external environ-
ment.” Id. at 1:34–40.
The ’674 patent describes one prior art solution to the
problems that may occur when a typical integrated circuit
device is powered down. This solution uses “power-
up/down detectors to generate a power-on/off-control (POC)
signal” which, in turn, “instructs the I/O devices when the
core devices are shut down.” Id. at 1:55–58. An example
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QUALCOMM INCORPORATED v. APPLE INC. 4
of this solution is provided in Figure 1, “a circuit diagram
illustrating a conventional POC system for multiple supply
voltage devices.” Id. at 4:18–19. The figure is labeled
“PRIOR ART”:
Id., Fig. 1.
The patent identifies various features in this prior art.
For instance, the patent states that, in certain circum-
stances, the detector’s three transistors are on, which ulti-
mately “caus[es] a significant amount of current to flow”
from the I/O power supply to the ground, “consum[ing] un-
necessary power.” Id. at 2:21–30. The patent purports to
solve this problem in the prior art by using “feedback cir-
cuits coupled to the up/down detector.” Id. at 3:31–32. The
patent describes these circuits as “configured to provide
feedback signals to adjust” the detector’s “current capac-
ity,” thereby preventing current from flowing to the
ground. Id. at 3:33–34.1
1 For a more detailed overview of the ’674 patent, see
Qualcomm Inc. v. Apple Inc., 24 F.4th 1367, 1369–71
(Fed. Cir. 2022) (“Qualcomm I”).
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QUALCOMM INCORPORATED v. APPLE INC. 5
On appeal, claims 1, 2, 5–9, 12, 13, and 16–22 of the
’674 patent are at issue. Claim 1 is illustrative:
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 sup-
ply 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, claim 1.
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QUALCOMM INCORPORATED v. APPLE INC. 6
II. Procedural History
In 2018, Apple filed two IPR petitions, each challenging
a different set of claims of the ’674 patent. J.A. 199–271,
2521–605. Each petition asserted the same two grounds
alleging that the challenged claims are unpatentable as ob-
vious under 35 U.S.C. § 103. J.A. 205, 2526. Each petition
opened with a table listing the two grounds for the IPR
challenge and stating the “Basis” of each ground. J.A. 205,
2526. Only Ground 2 is relevant to this appeal. The tables
stated that the “Basis” of Ground 2 was “Applicants [sic]
Admitted Prior Art (AAPA) [or ‘admissions’]2 in view of
Majcherczak”3 and, for certain claims, Matthews.4
J.A. 205, 2526.
J.A. 205.
2 The petitions identified AAPA as Figure 1 and text
at 1:22–2:39 of the ’674 patent. J.A. 240, 246, 249, 2570,
2579.
3 U.S. Patent Pub. No. 2002/0163364.
4 U.S. Patent No. 6,646,844.
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QUALCOMM INCORPORATED v. APPLE INC. 7
J.A. 2526. The prior art patents, Matthews and Majcher-
czak, both relate to integrated circuit devices with multiple
power supply voltages. Majcherczak, Abstract; Matthews,
Abstract. In addition to the table summaries, the petitions
argued that, for Ground 2, the asserted claims were obvi-
ous on a “[c]ombination of AAPA and Majcherczak” (and
Matthews as relevant). J.A. 246–67, 2576–601.
In January 2020, the Board issued a consolidated final
written decision on the two IPRs. J.A. 672–755 (also avail-
able as Apple Inc. v. Qualcomm Inc., Nos. IPR2018-01315,
IPR2018-01316, 2020 Pat. App. LEXIS 5250 (P.T.A.B.
Jan. 3, 2020) (“Initial Decision”)). The Board concluded
that the challenged claims are not unpatentable under
Ground 1 but are unpatentable under Ground 2. Initial
Decision at *81–82. The Board addressed Qualcomm’s ar-
gument that Ground 2 was “not permitted” because that
ground violated the requirement under 35 U.S.C. § 311(b)
that an IPR petition may “request to cancel as unpatenta-
ble 1 or more claims of a patent only on the basis of prior
art consisting of patents or printed publications.” Id.
at *15–22 (quoting § 311(b)) (emphasis added). The Board
rejected this argument, determining that “AAPA is admit-
ted to be prior art and is found in the ’674 patent” and was
thus “prior art consisting of patents or printed publica-
tions,” which can form “the basis” for a petitioner’s request
to cancel under § 311(b). Id. at *18–19.
Qualcomm appealed to this court. In August 2020, be-
fore the conclusion of the appeal, the U.S. Patent and
Trademark Office (“PTO”) Director issued a guidance mem-
orandum on § 311(b). J.A. 5255–63 (also available as PTO
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QUALCOMM INCORPORATED v. APPLE INC. 8
Memorandum, “Treatment of Statements of the Applicant
in the Challenged Patent in Inter Partes Reviews Under
§ 311(b),” Aug. 18, 2020 (“Guidance Memorandum”)). The
Guidance Memorandum purported to respond to “the con-
fusion in this area,” due to apparent conflict between vari-
ous Board decisions, including the Board’s initial decision
against Qualcomm. Guidance Memorandum at 3. The
Guidance Memorandum provided that AAPA is not “prior
art consisting of patents or printed publications” under
§ 311(b). Id. at 3–4. Nonetheless, the Guidance Memoran-
dum provided that an IPR petition can use AAPA to “evi-
dence the general knowledge possessed by someone of
ordinary skill in the art.” Id. at 4. The Guidance Memo-
randum concluded that this “evidence, if used in conjunc-
tion with one or more prior art patents or printed
publications” to “form[] ‘the basis’ of the proceeding under
§ 311, can support an obviousness argument.” Id.5
In February 2022, we decided Qualcomm’s appeal. We
determined that the Board “incorrectly interpreted
§ 311(b)’s ‘prior art consisting of patents or printed publi-
cations’ to encompass AAPA contained in the challenged
patent.” Qualcomm I, 24 F.4th at 1376–77. Still, we clari-
fied that “the use of AAPA can be permissible in an inter
partes review.” Id. at 1377. We thus vacated the Board’s
final written decision and remanded for the Board to deter-
mine “whether AAPA improperly formed the ‘basis’ of Ap-
ple’s challenge.” Id.
In June 2022, before the Board decided on remand, the
PTO Director issued another guidance memorandum.
J.A. 5264–70 (also available as PTO Memorandum, “Up-
dated Guidance on the Treatment of Statements of the
5 The Guidance Memorandum also stated that “the
basis” under § 311(b) “require[s] that at least one prior-art
patent or printed publication form the ‘foundation or start-
ing point’ of the IPR.” Id. at 6.
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QUALCOMM INCORPORATED v. APPLE INC. 9
Applicant in the Challenged Patent in Inter Partes Re-
views Under § 311(b),” June 9, 2022 (“Updated Guid-
ance”)). The Updated Guidance responded to Qualcomm I
and “supersedes” the prior Guidance Memorandum. Up-
dated Guidance at 1–3. It interpreted § 311(b) to require
an “in combination” rule: In an IPR petition that “relies on
admissions in combination with reliance on one or more
prior art patents or printed publications, those admissions
do not form ‘the basis’ of the ground.” Id. at 4. Citing Qual-
comm I, the Updated Guidance enumerated instances in
which an IPR petitioner can rely on AAPA for a skilled ar-
tisan’s “general” or “background” knowledge without treat-
ing AAPA as “the basis” in violation of § 311(b). Id. at 4–5.6
Finally, in November 2022, the Board decided on re-
mand that the challenged claims of the ’674 patent are un-
patentable as obvious on Ground 2. J.A. 1–65 (also
available as Apple Inc. v. Qualcomm Inc., No. IPR2018-
01315, 2022 WL 19835716 (P.T.A.B. Nov. 10, 2022) (“Final
Decision”)). The Board determined that Apple’s use of
AAPA in its IPR petitions did not violate § 311(b) because
the AAPA did not form the basis of Ground 2. Final Deci-
sion, 2022 WL 19835716, at *9–12. The Board adopted the
Updated Guidance’s interpretation of § 311(b) as its own,
specifically, the “in combination” rule: AAPA does not form
the basis of a ground in violation of § 311(b), if the ground
6 The Updated Guidance also stated: “Because the
Federal Circuit has made clear that it is appropriate in an
IPR to rely on admissions in an obviousness analysis
(Qualcomm [I], 274 F.4th 1376), Board panels should not
exclude the use of admissions based on the number of claim
limitations or claim elements the admission supplies or the
order in which the petition presents the obviousness com-
bination (e.g., prior art modified by admission or admission
modified by prior art).” Id. at 5. Instead, the Board should
consider “the asserted ground as a whole.” Id.
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QUALCOMM INCORPORATED v. APPLE INC. 10
relies on the AAPA in combination with prior art patents
or printed publications. Id. at *9. Applying this interpre-
tation, the Board determined that, because Ground 2 relied
on AAPA “in combination” with prior art patent(s) (i.e.,
Majcherczak and, as relevant, Matthews), the AAPA did
not form the basis of Ground 2 in violation of § 311(b). Id.
The Board then evaluated whether AAPA formed the
basis of Ground 2 in violation of § 311(b), employing an
analysis not directly tied to its statutory interpretation
(i.e., setting aside the “in combination” rule). First, the
Board addressed Qualcomm’s arguments that Apple’s peti-
tions used AAPA as the basis of Ground 2 because the pe-
titions “conceded that AAPA forms the basis of the Ground
2 challenge” by expressly stating that the “Basis” of Ground
2 was “Applicants [sic] Admitted Prior Art (AAPA) in view
of Majcherczak” (and, as relevant, Matthews). Id. at *10
(referring to statements, inter alia, at J.A. 205, 2526). The
Board rejected this argument, because, per Qualcomm I,
AAPA can be relied on without violating § 311(b), so these
express statements are “not determinative as to what the
ground is based on.” Id.
Second, the Board addressed Qualcomm’s arguments
that, setting aside Apple’s “concessions,” Apple’s petitions
used AAPA as the basis of Ground 2 in violation of § 311(b).
Id. at *10–12. The Board rejected these arguments by re-
lying on Qualcomm I, related precedent, and parts of the
Updated Guidance not directly drawn from the statutory
interpretation that produced the “in combination” rule
(e.g., the Board relied on the Updated Guidance’s rejection
of a “foundation or starting point test” to determine
whether AAPA forms the basis in violation of § 311(b), see
supra nn.5–6). Final Decision, 2022 WL 19835716,
at *10–12.
Administrative Patent Judge Galligan concurred, join-
ing the majority only for its interpretation and application
of the Updated Guidance’s “in combination” rule. Id. at *26
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QUALCOMM INCORPORATED v. APPLE INC. 11
(Galligan, Administrative Patent Judge, concurring) (cit-
ing id. at *9). He explained that “the answer to the ques-
tion we must decide on remand is found in the Director’s
Updated Guidance,” whereas “the remaining discussion”
applying § 311(b) without directly using the “in combina-
tion” rule “is unnecessary.” Id.
Qualcomm appeals. We have jurisdiction under
28 U.S.C. § 1295(a)(4)(A).
D ISCUSSION
We address three issues raised on appeal. First,
whether the Board’s decision to consider Ground 2 during
IPR proceedings, based on its interpretation and applica-
tion of § 311(b), is reviewable by this court. Second,
whether the Board misinterpreted § 311(b). Third,
whether the Board erred in determining that Ground 2
complied with § 311(b).
All three issues relate to the language of § 311(b) and
the Board’s interpretation of it. We begin by providing the
relevant texts. Section 311(b) reads in full:
A petitioner in an inter partes review may request
to cancel as unpatentable 1 or more claims of a pa-
tent 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.
35 U.S.C. § 311(b) (emphasis added). To interpret this pro-
vision, the Board stated:
If an IPR petition relies on admissions in combina-
tion with reliance on one or more prior art patents
or printed publications, those admissions do not
form “the basis” of the ground and must be consid-
ered by the Board in its patentability analysis.
Final Decision, 2022 WL 19835716, at *9 (quoting Updated
Guidance at 4) (quotations omitted) (emphasis added).
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QUALCOMM INCORPORATED v. APPLE INC. 12
I
Apple asserts that Qualcomm’s appeal is barred from
judicial review. Appellee’s Br. 16–20. Apple cites
35 U.S.C. § 314(d), which states: “The determination by the
Director whether to institute an inter partes review under
this section shall be final and nonappealable.” Apple ar-
gues that Qualcomm’s challenge under § 311(b) is a chal-
lenge to the Board’s determination to institute Apple’s two
IPRs. Appellee’s Br. 16–17. Apple contends that challeng-
ing “the basis” of Ground 2 as “not permissible” under
§ 311(b) amounts to a challenge of the decision to institute
the IPRs. Id. Apple primarily cites Cuozzo Speed Techs.,
LLC v. Lee, 579 U.S. 261 (2016), and case law following it.
Appellee’s Br. 16–19. We conclude that Qualcomm’s ap-
peal is reviewable.
In Cuozzo, the Supreme Court established principles
for reviewability under § 314(d). 579 U.S. at 271–76. The
Court decided § 314(d) is not an absolute bar to an IPR-
related appeal: While there is a “strong presumption favor-
ing judicial review,” this presumption can be “overcome” by
“clear and convincing indications . . . that Congress in-
tended to bar review.” Id. at 273 (quotations omitted). The
Court determined that such indications preclude review
under § 314(d) in limited circumstances, in particular,
when a patent holder’s challenge to a decision to institute
an IPR “consist[s] of questions that are closely tied to the
application and interpretation of statutes related to the Pa-
tent Office’s decision to initiate inter partes review” under
§ 314. Id. at 275 (emphasis added). According to the
Court, Congress meant the provision to give the PTO “sig-
nificant power to revisit and revise earlier patent grants”
without the inefficiencies of unnecessary oversight that
would manifest if every “ordinary dispute” were subject to
review. Id. at 271–72. The Court concluded that Cuozzo
presented one such “ordinary dispute.” Id. at 271–76. The
Court reasoned that the patent holder’s argument that the
petitioner had not pled “with particularity” (as required by
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QUALCOMM INCORPORATED v. APPLE INC. 13
35 U.S.C. § 312(a)(3)) amounted to “little more than a chal-
lenge to” the determination to authorize the IPR given the
“information presented in the petition” under 35 U.S.C.
§ 314(a). Id. at 276. The Court concluded that the patent
holder’s challenge was not reviewable. Id.
Nonetheless, the Court did not “decide the precise ef-
fect of § 314(d) on appeals that implicate constitutional
questions, or that present other questions of interpretation
that reach, in terms of scope and impact, well beyond”
§ 314. Id. at 274–75 (quotations omitted). The Court pre-
sented examples where an IPR institution decision imper-
ils due process or “act[s] outside” the PTO’s “statutory
limits.” Id. at 275.
The Court considered Cuozzo’s beyond-statutory-limits
exception in SAS Inst., Inc. v. Iancu, 584 U.S. 357, 371
(2018). SAS held that § 314(d) does not bar judicial review
of a challenge against the PTO Director’s so-called power
of “partial institution,” i.e., to select which challenged
claims to include when instituting an IPR. Id. at 363–71.
The Court decided that the practice of partial institution
“appears nowhere in” the statute and thus exceeded the
“statutory limits” warned of in Cuozzo. Id. at 363 (quota-
tions omitted), 371 (quoting Cuozzo, 579 U.S. at 275) (quo-
tations omitted). The Court concluded that review of
partial institution decisions follows the Administrative
Procedure Act (“APA”) requirement to “set aside agency ac-
tion not in accordance with law or in excess of statutory
jurisdiction, authority, or limitation.” Id. at 371 (quoting
5 U.S.C. §§ 706(2)(A), (C)) (quotations omitted).
Subsequent decisions followed Cuozzo in denying judi-
cial review under § 314(d) where relevant statutory re-
quirements are “closely tied” to IPR institution decisions.
In Thryv, Inc. v. Click-to-Call Techs., LP, the Supreme
Court decided that it is impermissible to review an appeal
about a “time limitation.” 590 U.S. 45, 53–60 (2020) (on
35 U.S.C. § 315(b), which requires an IPR “may not be
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QUALCOMM INCORPORATED v. APPLE INC. 14
instituted if the petition requesting the proceeding . . . is
filed more than 1 year after the date on which” the request-
ing party is “served with a complaint alleging infringe-
ment”). Similarly, in ESIP Series 2, LLC v. Puzhen Life
USA, LLC, we determined that review is impermissible
when an appeal concerns a “parties in interest” require-
ment. 958 F.3d 1378, 1385–86 (Fed. Cir. 2020) (on
35 U.S.C. § 312(a)(2), which requires an IPR petition “may
be considered only if” it includes “identification of all real
parties in interest”).
These cases involved “ordinary” challenges to straight-
forward procedural rules “closely tied” to IPR institution
decisions. See Cuozzo, 579 U.S. at 275. On the other hand,
we have heard IPR appeals—including Qualcomm I—
where challenged issues were related, but not “closely,” to
institution decisions. In these cases, we did not bar review
under § 314(d). For example, in Koninklijke Philips N.V.
v. Google LLC, we decided that the Board erred by institut-
ing an IPR based on a combination of prior art not in the
petition. 948 F.3d 1330, 1335–38 (Fed. Cir. 2020). There,
we did not address § 314(d) or nonappealability generally.
Id. The issue of whether review was precluded did not
arise. This approach conforms with SAS and later case
law. For instance, Thryv distinguished the challenge in
SAS as rooted in “the manner in which the agency’s review
proceeds once instituted,” while Thryv concerned “whether
the agency should have instituted review at all.” Thryv,
590 U.S. at 58.7
7 We have clarified that Thryv addressed the
“threshold” issue of whether to institute an IPR: “Thryv
held that the ‘No Appeal’ provision [§ 314(d)] barred judi-
cial review of the threshold decision to institute inter
partes review despite the argument that the Board ex-
ceeded its statutory authority in doing so.” SIPCO, LLC v.
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QUALCOMM INCORPORATED v. APPLE INC. 15
Qualcomm does not challenge the Board’s “threshold”
decision to institute the IPRs. See SIPCO, 980 F.3d at 870.
Rather, Qualcomm challenges the Board’s determination of
unpatentability on Ground 2, with respect to the use of
AAPA in reaching that determination. Appellant’s Br. 2–3
(asserting “the Board erred in deciding this ground” (i.e.,
Ground 2), not the institution of the IPRs in the first place,
and not asking for cancellation of the IPRs), 20 (“[T]he
Board thus erred in rendering a patentability determina-
tion for Ground 2” (emphasis added)); see also Appellant’s
Reply Br. 27. In other words, Qualcomm’s challenge per-
tains to the Board’s interpretation and application of a
statutory provision, § 311(b), on what qualifies as a permis-
sible basis for a ground in an IPR petition.
Moreover, Qualcomm’s appeal originates from its chal-
lenge to only part of the Board’s final written decision prior
to remand—its consideration of Ground 2—and not the de-
cision to institute review. The Board decided on two
grounds, only one of which, Ground 2, is now on appeal.
See J.A. 753 (concluding the challenged claims are un-
patentable as obvious on Ground 2 and rejecting Apple’s
Ground 1). Qualcomm does not address Ground 1 on ap-
peal and does not seek cancellation of the institution of the
IPRs as a whole. See Appellant’s Br. 4 (requesting reversal
of the Board’s judgment, not cancellation of the IPRs).
Accordingly, Qualcomm’s challenge does not pertain to
the Board’s determination about a run-of-the-mill statu-
tory provision of a procedural nature regarding the thresh-
old decision of whether to institute an IPR. Rather, as in
SAS, Qualcomm’s appeal presents a question about “the
Emerson Elec. Co., 980 F.3d 865, 869 (Fed. Cir. 2020) (em-
phasis added). In SIPCO, we explained Thryv held that
§ 314(d) bars review of challenges to “whether the agency
should have instituted review at all.” Id. at 871 (quoting
Thryv, 590 U.S. at 58) (quotations omitted).
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QUALCOMM INCORPORATED v. APPLE INC. 16
manner in which the agency’s review proceeds once insti-
tuted.” Thryv, 590 U.S. at 58. Thus, Qualcomm’s appeal
falls outside the criteria for unreviewability under § 314(d),
as established in the above precedent.
Based on the foregoing, we hold that Qualcomm’s ap-
peal is not barred from review under § 314(d).
II
We now turn to Qualcomm’s arguments that the Board
erred in interpreting § 311(b) and in determining that
Ground 2 complied with § 311(b). We review Board deci-
sions “under the standards provided in the” APA, 5 U.S.C.
§ 706. Unwired Planet, LLC v. Google Inc., 841 F.3d 1376,
1379 (Fed. Cir. 2016). The APA requires us to “set aside”
Board actions if they are “arbitrary, capricious, an abuse of
discretion, or otherwise not in accordance with law or un-
supported by substantial evidence.” Id. (quotations and ci-
tation omitted). “We review the Board’s statutory
interpretation de novo.” Id. (citation omitted).
A
Qualcomm argues that the Board erred in its interpre-
tation of § 311(b). Appellant’s Br. 2. According to Qual-
comm, § 311(b) is not “satisfie[d]” when, as the Board
stated, “a ground includes AAPA ‘in combination with reli-
ance on one or more prior art patents or printed publica-
tions.’” Id. at 2–3 (quoting Final Decision, 2022 WL
19835716, at *9), 39–43. Qualcomm argues that a petition
cannot “us[e] AAPA to form the basis of an IPR ground,”
because the “only” permissible “basis” for an IPR ground is
“prior art consisting of patents or printed publications.”
Appellant’s Br. 23 (quoting § 311(b)) (quotations omitted).
Qualcomm asserts that this position is supported by the
plain meaning of the statute and related precedent. Appel-
lant’s Br. 22–31. We hold that the Board’s interpretation
of § 311(b) contravened the plain meaning of the statute.
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QUALCOMM INCORPORATED v. APPLE INC. 17
When interpreting a statute, we first look to its lan-
guage and plain meaning, including its text and structure.
Kingdomware Techs., Inc. v. United States, 579 U.S. 162,
171 (2016); Hyatt v. United States Pat. & Trademark Off.,
904 F.3d 1361, 1374 (Fed. Cir. 2018) (citations and quota-
tions omitted). If the language is “unambiguous and the
statutory scheme is coherent and consistent,” the inquiry
ends there. Thaler v. Vidal, 43 F.4th 1207, 1213 (Fed. Cir.
2022) (citations and quotations omitted).
Section 311(b) states that a petitioner “may request to
cancel as unpatentable” claims “only on the basis of prior
art consisting of patents or printed publications.” This
means that “the basis” of an IPR ground asserting un-
patentability can “only” include “prior art consisting of pa-
tents or printed publications.” In Qualcomm I, we clarified
that, according to the plain language of § 311(b), related
case law, and a “natural reading” of the statute, AAPA is
not a prior art patent or printed publication. 24 F.4th
at 1373–75 (determining that AAPA “is not contained in a
document that is a prior art patent or printed publication”).
Thus, because the basis can only include prior art consist-
ing of patents or printed publications, and because AAPA
is not a prior art patent or printed publication (per Qual-
comm I), it follows that the plain meaning of § 311(b) does
not permit the basis to include AAPA.
By contrast, the Board interpreted § 311(b) to provide
that AAPA does “not form ‘the basis’ of the ground” where
“an IPR petition relies on admissions in combination with
reliance on one or more prior art patents or printed publi-
cations.” Final Decision, 2022 WL 19835716, at *9 (quot-
ing Updated Guidance at 4) (quotations omitted)
(emphasis added). This interpretation would establish an
“in combination” rule that would provide that AAPA cannot
form the basis of a ground and, as a result, must be consid-
ered by the Board, whenever a petition combines AAPA
with prior art patents or printed publications. We recog-
nize that there are instances in which a petition may rely
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QUALCOMM INCORPORATED v. APPLE INC. 18
in part on AAPA, such as to indicate the general knowledge
of a person of ordinary skill in the art, without contraven-
ing § 311(b). Koninklijke Philips, 948 F.3d at 1339. But it
cannot be that AAPA never forms the basis of a ground un-
der § 311(b) whenever AAPA is combined with prior art pa-
tents or printed publications. Such a rule would not
account for situations where a petition relies on AAPA in
combination with prior art patents and printed publica-
tions but also includes the same AAPA as the basis or part
of the basis. In those situations, a Board determination
considering AAPA would violate § 311(b), because, as ex-
plained, the plain language of § 311(b) limits “the basis” to
“prior art consisting of patents or printed publications.”
The statute is clear.
The Board exceeded this statutory limit by determin-
ing that the mere combination of AAPA with prior art pa-
tents or printed publications automatically excludes AAPA
from the basis of a ground. Under the plain meaning of
§ 311(b), 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. Accordingly, the
Board failed to properly interpret § 311(b).
The Board cited Qualcomm I and Koninklijke Philips
for the position that an IPR petition may “rely on” AAPA to
“supply a missing claim limitation” to show “the general
knowledge of a skilled artisan” when assessing obvious-
ness. Final Decision, 2022 WL 19835716, at *9 (quoting
Qualcomm I, 24 F.4th at 1375–76 (quotations omitted)
(cleaned up), and Koninklijke Philips, 948 F.3d
at 1337–38); see also Updated Guidance at 4 (providing
similar citations).8 But, in Qualcomm I, we determined
8 While we acknowledge the instructional value of
the Updated Guidance, we recognize that it is not binding
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QUALCOMM INCORPORATED v. APPLE INC. 19
that an IPR petition may rely on AAPA for certain uses, so
long as the AAPA is not the basis of a ground in violation
of § 311(b). 24 F.4th at 1375. Meanwhile, in Koninklijke
Philips, we did not directly address “the basis” under
§ 311(b). 948 F.3d at 1337–38. In neither case did we hold
that AAPA does not form the basis of a ground if used in
combination with prior art patents or printed publications.
On this point, the Board correctly read Qualcomm I to
determine that a petitioner may rely on AAPA. See Final
Decision, 2022 WL 19835716, at *9. But the Board went
further to conflate “reliance” as used in this case law with
“basis” under § 311(b). We have not established a blanket
rule that, as the Board proposes, AAPA used in combina-
tion with prior art patents or printed publications under
§ 311(b) is ipso facto not the basis or part of the basis of a
ground. As explained above, this interpretation would per-
mit use of AAPA beyond what is permitted under the plain
language of the statute. The Board erred by adopting this
incorrect interpretation.
B
Qualcomm argues that the Board erred in applying
§ 311(b) to determine that Ground 2 complied with the
statute. Appellant’s Br. 42–46. According to Qualcomm,
the Board reached this conclusion by applying an incorrect
interpretation (i.e., the “in combination” rule) and misap-
plying § 311(b) in other ways. Id. at 42–46. Apple and the
PTO Director, as intervenor, respond that, under any rea-
sonable interpretation of § 311(b), Ground 2 complies with
the statute. Appellee’s Br. 21–40; Intervenor’s Br. 29–32.
The Board determined that the AAPA at issue—Figure
1 of the ’674 patent and accompanying text—does not form
the basis of Ground 2 under § 311(b). Final Decision,
on this court and does not carry the force of law. In re
Rudy, 956 F.3d 1379, 1382 (Fed. Cir. 2020).
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QUALCOMM INCORPORATED v. APPLE INC. 20
2022 WL 19835716, at *9–12. Accordingly, the Board con-
cluded that Ground 2 complied with § 311(b). Id. The
Board thus considered Ground 2 and, under that ground,
concluded that the challenged claims are unpatentable as
obvious. Id. at *12–26. Qualcomm asserts that Apple’s pe-
titions expressly and substantively “includ[ed] AAPA” as
the basis of Ground 2, thereby contravening § 311(b). Ap-
pellant’s Br. 32–39. In Qualcomm’s view, the Board should
have determined that Ground 2 violated § 311(b) and thus
could not provide a ground for unpatentability. Id. at 42–
46. For the following reasons, we agree with Qualcomm
that the Board misapplied § 311(b) to conclude that
Ground 2 complies with the statute.
First, the Board erred when it applied its incorrect stat-
utory interpretation to conclude that “it is the prior art pa-
tents—Majcherczak and, when used, Matthews—that form
the basis of the challenge and AAPA is simply being used
to provide missing limitations,” and not as the basis of
Ground 2 in violation of § 311(b). Final Decision, 2022 WL
19835716, at *9. The Board reached this conclusion by de-
termining that, “[b]ecause Petitioner’s grounds involve a
combination of AAPA and prior art patent(s), AAPA does
not form the basis of the ground.” Id. (emphasis added). In
other words, the Board applied its “in combination” rule to
determine that the AAPA was not the basis of Ground 2 in
violation of § 311(b). As we note above, we conclude that
this “in combination” rule reflects an incorrect statutory in-
terpretation. See supra Discussion Section II.A. Here, the
Board applied that incorrect interpretation to conclude
that Ground 2 complied with § 311(b). This was error.
Second, the Board furthered this error when it rejected
Qualcomm’s argument that Apple’s petitions expressly
stated or “conceded that AAPA forms the basis of the
Ground 2 challenge.” Final Decision, 2022 WL 19835716,
at *10. But Apple did expressly state that AAPA is in-
cluded in the basis of Ground 2. Each petition opened with
a table that prominently labeled the “Basis” of Ground 2 as
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QUALCOMM INCORPORATED v. APPLE INC. 21
“AAPA in view of Majcherczak” (and Matthews, as rele-
vant). J.A. 205, 2526.9 Addressing these statements, the
Board acknowledged that Qualcomm “identifies the rele-
vant challenge as being based on AAPA and Majcherczak
(with or without Matthews).” Final Decision, 2022 WL
19835716, at *10. Nonetheless, the Board went on to de-
termine that Qualcomm failed to “point to a concession that
AAPA forms the basis of the ground.” Id. Yet, the state-
ments from the tables in Apple’s petitions clearly designate
AAPA as included in the basis of Ground 2. In other words,
these are express statements by Apple that AAPA was part
of the basis of Ground 2—a violation of § 311(b).
The Board’s conclusion that Apple’s express state-
ments about Ground 2’s basis were not concessions re-
flected the Board’s application of its incorrect statutory
interpretation. The Board explained that these statements
merely “describe how the grounds include both AAPA and
a prior art patent, Majcherczak” as used “in combination.”
Id. The Board further explained that “the fact that a
ground relies on both applicant admissions and a prior art
patent is not determinative.” Id. But the Board treated
such reliance on both AAPA and prior art patent(s) as de-
terminative of the alternative conclusion—i.e., of the con-
clusion that AAPA is not the basis or part of the basis of a
ground. See id. This reasoning parallels the Board’s inter-
pretation of § 311(b), in which reliance on AAPA in combi-
nation with prior art patents or printed publications
renders that AAPA as not included in the basis of a ground.
Above, we concluded that this interpretation is incorrect:
Reliance on AAPA in combination with prior art patents or
printed publications does not automatically render the
9 It is also significant that Apple’s response brief, in
Qualcomm’s initial appeal from the Board prior to remand,
described Ground 2 as “based on AAPA in view of the
Majcherczak reference.” J.A. 5087.
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QUALCOMM INCORPORATED v. APPLE INC. 22
AAPA as not included in the basis of a ground. See supra
Discussion Section II.A. In other words, just because Apple
relied on AAPA in combination with prior art patent(s)
does not mean that the AAPA was not included in the basis
of Ground 2 in compliance with § 311(b). The Board’s de-
termination otherwise assumed an incorrect interpretation
of the statute.
Moreover, the Board improperly turned to Qualcomm I
to support its conclusion that Apple had not conceded that
AAPA was included in the basis of Ground 2. The Board
quoted Qualcomm I’s determination that an IPR petition
“may rely” on AAPA, “even” if the AAPA is not the basis of
a ground. Final Decision, 2022 WL 19835716, at *10 (quot-
ing 24 F.4th at 1375–76) (quotations omitted). But the is-
sue here is not whether a petition can “rely on” AAPA.
Qualcomm has not challenged Qualcomm I’s determina-
tion that a petition may rely on AAPA in combination with
prior art patents or printed publications. See Appellant’s
Reply Br. 5. Rather, the issue is whether AAPA was in-
cluded in the basis of Ground 2 in violation of § 311(b). It
matters that Apple expressly included AAPA in the “Basis”
of Ground 2. See J.A. 205, 2526. Reliance on AAPA in com-
bination with prior art patents or printed publications is
not dispositive of whether AAPA is included in the basis of
a ground. But what is dispositive are express statements—
as in Apple’s petitions—that AAPA is in the “Basis” of a
ground. See id.
In this instance, we agree with Qualcomm that Apple
should be held to the phrasing of its petition because an
IPR petitioner is the “master of its own petition.” Intuitive
Surgical, Inc. v. Ethicon LLC, 25 F.4th 1035, 1041
(Fed. Cir. 2022); see Appellant’s Br. 34. Apple responds
that, under any reasonable interpretation of § 311(b), Ap-
ple should not be held to its express use of “basis,” because
Intuitive Surgical is inapplicable. Appellee’s Br. 44–45.
According to Apple, Intuitive Surgical addressed how “a pe-
titioner could have better crafted its arguments to fit three
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QUALCOMM INCORPORATED v. APPLE INC. 23
grounds within two IPR petitions instead of three”—not
the petitions’ phrasing. Appellee’s Br. 44–45. But, when
Intuitive Surgical considered how the petitioner could have
reduced the number of petitions, we did address phrasing:
We determined that the petitioner “could have made its
challenges more pointed and specific so as to fit all of its
grounds in two petitions satisfying the word limits.” Intu-
itive, 25 F.4th at 1041 (emphasis added).
Apple and the PTO Director, as intervenor, further ar-
gue that Qualcomm’s concessions argument prioritizes “la-
bels over substance” in violation of § 311(b). Appellee’s
Br. 44; Intervenor’s Br. 21–23. They assert that the stat-
ute requires “the basis” of a ground be determined by con-
sidering the substance of an IPR petition, not its form.
Appellee’s Br. 44–45; Intervenor’s Br. 23–24. But the plain
language of § 311(b) does not provide any direction about
whether the form of a petition determines if AAPA is in-
cluded in the basis of a ground. See 35 U.S.C. § 311(b). We
see no support for the position that an IPR petitioner
should not be held to its express inclusion of AAPA in the
basis of a ground. Here, Apple’s petitions expressly in-
cluded AAPA in the “Basis” of Ground 2. See J.A. 205,
2526. It was thus error for the Board to determine that,
despite these express statements, the use of AAPA in
Ground 2 complied with § 311(b).
We conclude that the Board erred in determining that
Ground 2 complied with § 311(b). Accordingly, the Board
should not have considered Ground 2 in its final written
decision and should not have determined that the chal-
lenged claims are unpatentable as obvious under Ground
2. Because the Board rejected Ground 1, and because there
were no other grounds, the Board should have determined
that the challenged claims are not unpatentable.
Due to the unequivocal use of “basis” in Apple’s peti-
tions, we need not consider whether, in substance, Ground
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QUALCOMM INCORPORATED v. APPLE INC. 24
2 included AAPA in its basis.10 We expect that future cases
may require the PTO and this court to consider the sub-
stance of a petition to determine compliance with § 311(b).
CONCLUSION
We have considered the parties’ remaining arguments
and find them unpersuasive. For the above reasons, we
conclude that Qualcomm’s appeal is reviewable and that
the Board erred in determining that the challenged claims
of the ’674 patent are unpatentable as obvious.
REVERSED
10 Apple and the PTO Director argue that the Board
properly rejected other arguments considering the sub-
stance of Apple’s petitions (e.g., rejecting a “foundation” or
“starting point” test that considers the “order in which a
petition presents the obviousness combination,” Updated
Guidance at 5). Appellee’s Br. 50–55; Intervenor’s
Br. 24–32. We need not reach these counterarguments, be-
cause we conclude that Apple’s express statements in its
petitions are sufficient to establish that Apple included
AAPA in the basis of Ground 2, thereby violating § 311(b).
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