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 ______________________

JENNIFER L. SWIZE, Jones Day, Washington, DC, ar- gued for appellant. Also represented by ROBERT BREETZ, DAVID B. COCHRAN, Cleveland, OH; JOHN MICHAEL GRAVES, MATTHEW J. RUBENSTEIN, Minneapolis, MN; ISRAEL SASHA MAYERGOYZ, Chicago, IL. Case: 23-1208 Document: 55 Page: 2 Filed: 04/23/2025

2 QUALCOMM INCORPORATED v. APPLE INC.

LAUREN ANN DEGNAN, Fish & Richardson P.C., Wash- ington, DC, argued for appellee. Also represented by MICHAEL JOHN BALLANCO, CHRISTOPHER DRYER.

MAUREEN DONOVAN QUELER, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, argued for intervenor. Also represented by ROBERT J. MCMANUS, BRIAN RACILLA. ______________________

Before LOURIE, PROST, 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 Case: 23-1208 Document: 55 Page: 3 Filed: 04/23/2025

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 “t