Qualcomm prevails at Fed Circ in Apple patent dispute
Chipmaker Qualcomm has persuaded the US Court of Appeals for the Federal Circuit that the US Patent and Trial and Appeal Board (PTAB) may have erred when it found that claims in a semiconductor patent were invalid.
The Federal Circuit handed down its precedential decision yesterday, February 1, vacating the board’s 2020 findings in favour of Apple.
Background
The dispute arose in 2018 when Apple petitioned for an inter partes review (IPR) of Qualcomm’s patent, US number 8,063,674, holding that a description within the invention was the same as “prior art” innovations disclosed in earlier patents or other publications.
The ’674 patent, is directed to integrated circuit devices with power detection circuits for systems with multiple supply voltages, and describes a prior art method to extend the device’s battery life.
In 2019, Apple and Qualcomm resolved global litigation over smartphone modem chips and signed a six-year licensing deal, but their dispute at the PTAB continued.
The PTAB agreed with Apple’s arguments, prompting Qualcomm to appeal on the grounds that the disclosures contained in the background section of the patent should not qualify as prior art.
The appeal largely centred on differing interpretations of the phrase “prior art consisting of patents or printed publications”.
Apple argued that any “prior art” contained in any patent or printed publication, regardless of whether the document itself is prior art, can be used as a basis for a challenge in an IPR review.
The tech company held that Qualcomm’s theory impermissibly rewrites “prior art consisting of patents or printed publications” as “prior-art patents” or “prior-art publications”.
Wrongful ‘invalidation’
But the Federal Circuit yesterday sided with Qualcomm, agreeing that the board may have mistakenly invalidated the patent based on admissions made within the patent itself.
US Circuit Judge Raymond Chen opined that Qualcomm's patent wasn't prior art, and that Apple's challenge couldn't be based on it.
He went on to to conclude that this reasoning, “excludes any descriptions of the prior art contained in the challenged patent and that this interpretation is consistent with prior judicial interpretation”.
The court remanded the decision to the PTAB to reconsider whether Apple’s petition nonetheless raised a valid challenge “on the basis of prior art consisting of patents or printed publications”.
The case is Qualcomm v Apple, U.S. Court of Appeals for the Federal Circuit, Nos. 20-1558 and 20-1559.
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