/>iAs provided by statute at 35 U.S.C. § 311(b), a petitioner in an inter partes review (IPR) may challenge the claims of a patent “only on the basis of prior art consisting of patents or printed publications.” Does this provision permit IPR challenges based on Applicant Admitted Prior Art (AAPA) ― art identified in the patent as previously known ― in combination with a patent or printed publication? The Federal Circuit recently announced its decision in Qualcomm Inc. v. Apple Inc., clarifying that AAPA is not a “patent[] or printed publication[]” under the statute, and that combining AAPA with a patent or printed publication does not shield the use of AAPA from violating 35 U.S.C. § 311(b) in a petition for IPR.
Background
History of Appeals
In January 2020, the Patent Trial and Appeal Board determined in a final written decision that the ’674 Patent claims were unpatentable under Ground 2. The Board rejected the arguments of the patent owner (Qualcomm) that Ground 2 was “not permitted.” The Board held that “AAPA is admitted to be prior art and is found in the ’674 patent” and was thus “prior art consisting of patents or printed publications,” and therefore qualified as prior art under § 311(b).
The patent owner appealed, arguing that AAPA could not be used as a “basis” for an IPR challenge, and that § 311(b) is limited to “prior art consisting of patents or printed publications.” While the appeal was pending, former USPTO Director Iancu published guidance in August 2020 noting that AAPA is not “prior art consisting of patents or printed publications” under § 311(b), but that AAPA, “if used in conjunction with” other patent documents “forming ‘the basis’” of an IPR proceeding under § 311, could support a finding of obviousness. Nonetheless, in February 2022, the Federal Circuit vacated the Board’s ruling against the patent owner, finding that AAPA does not qualify as prior art under § 311(b) and may not form the basis of an IPR proceeding, but could be used in an IPR “under particular circumstances,” and remanding back to the Board to consider whether the AAPA formed “the basis” of Ground 2.
In response, former USPTO Director Vidal issued superseding guidance in June 2022 that established an “in combination” rule: “Board panels should determine whether the petition relies on admissions in the specification in combination with reliance on at least one prior art patent or printed publication” and, if so, “those admissions do not form ‘the basis’ of the ground and must be considered by the Board in its patentability analysis.” Applying this superseding guidance, the Board again found in a second final written decision on remand that the challenged claims of the ’674 patent were unpatentable under Ground 2 because petitioner did not use AAPA to form the “basis” of Ground 2.
The patent owner once again appealed to the Federal Circuit. In its recent decision of April 23, 2025, the Federal Circuit found that the plain meaning of § 311(b) limits the basis of an IPR proceeding to only prior art patents or printed publications, and that AAPA cannot be used, alone or in combination with prior art patents or printed publications, as the basis for instituting an IPR. The Federal Circuit acknowledged that AAPA may be used to provide general background knowledge without violating § 311(b) and may be relied upon in combination with prior art patents or printed publications—just not as the basis.
Since the Board had already rejected petitioner’s Ground 1 argument for invalidity of the ’674 patent claims, and no other grounds remained, the Federal Circuit reversed, noting that the Board should have instead found that the challenged claims are not unpatentable.
Key Takeaways
While AAPA may be relied on in an IPR, it is critical for litigants to ensure that AAPA is not used to form the basis of the IPR. This clarification of § 311(b) by the Federal Circuit will ultimately require a higher threshold for challenging patents in IPRs. In order to avoid early dismissals, IPR petitions should be clear in how AAPA is being used, including identifying only printed patents and publications as the grounds for petitions.
