The U.S. Court of Appeals for the Federal Circuit said the Patent Trial and Appeal Board may have wrongly relied on part of Qualcomm’s own patent to find that it was invalid.
Apple and Qualcomm settled a global dispute over smartphone modem chips in 2019, which resolved claims that Apple infringed Qualcomm patents but didn’t end their PTAB proceedings.
Apple challenged the patent at issue in 2018, arguing it was invalid because the invention was the same as “prior art” innovations that had already been disclosed in earlier patents or other publications.
The board ruled for Apple in 2020 based on previous publications, as well as part of the challenged patent that said most of its limitations were already known in the prior art.
Qualcomm appealed to the Federal Circuit, arguing the patent itself couldn’t qualify as prior art, while Apple argued that the board could rely on the prior art mentioned in Qualcomm’s patent.
U.S. Circuit Judge Raymond Chen wrote for a three-judge panel that the statement from Qualcomm’s patent wasn’t prior art, and that Apple’s challenge couldn’t be based on it. However, Chen said the board could still use the statement in its analysis.
The court sent the case back to the Patent Trial and Appeal Board to consider whether the statement was the “basis” for Apple’s challenge.
The parties and their attorneys didn’t immediately respond to a request for comment about the case.
Circuit Judges Richard Taranto and William Bryson joined the decision.
The case is Qualcomm Inc v. Apple Inc, U.S. Court of Appeals for the Federal Circuit, Nos. 20-1558 and 20-1559.
For Qualcomm: Jennifer Swize of Jones Day
For Apple: Lauren Degnan of Fish & Richardson