This morning the Federal Circuit issued a precedential opinion in a patent case holding that applicant admitted prior art (AAPA) disclosed within a challenged patent is not “prior art” for the purposes of inter partes review. While the court noted that AAPA is not categorically excluded from inter partes review for all purposes, the court held is not “prior art consisting of patents or printed publications” under the relevant statutory provision. The court also issued a nonprecedential opinion in an employment case. Here are the introductions to the opinions.
Qualcomm Inc. v. Apple Inc. (Precedential)
Qualcomm Inc. (Qualcomm) appeals from two related inter partes review (IPR) decisions of the Patent Trial and Appeal Board (Board) finding several claims of Qualcomm’s U.S. Patent No. 8,063,674 (’674 patent) unpatentable under 35 U.S.C. § 103. To reach its unpatentability finding, the Board relied on a ground raised by Apple Inc. (Apple) that relied in part on applicant admitted prior art (AAPA)—here, statements in the challenged patent acknowledging that most of the limitations of the patent’s claims were already known—and a prior art patent. Qualcomm argues the Board’s reliance on AAPA runs afoul of 35 U.S.C. § 311(b), which limits an inter partes review petitioner to challenge claims as unpatentable “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.” § 311(b) (emphasis added). Because we agree with Qualcomm that the Board erred in concluding that AAPA constitutes “prior art consisting of patents or printed publications” under § 311(b), we vacate the Board’s decision. We remand for the Board to determine whether Apple’s petition nonetheless raises its § 103 challenge “on the basis of prior art consisting of patents or printed publications.” § 311(b) (emphasis added).
Edler v. Department of Veterans Affairs (Nonprecedential)
Donald Edler (“Edler”) seeks review of the Merit Systems Protection Board (“the Board”) decision affirming the Department of Veterans Affairs (“VA”) decision to remove him from the position of housekeeping supervisor for two charges: (1) privacy violation; and (2) conduct unbecoming a federal employee. Edler v. Dep’t of Veterans Affairs, No. CH-0714-20-0448-I-1, 2020 MSPB LEXIS 4618 (M.S.P.B. Nov. 17, 2020) (“Decision on Appeal”). For the reasons explained below, we affirm.