Applicant Admitted Prior Art Cannot Be a “Basis For” an IPR Challenge

In a decision dated February 1, 2022, the Federal Circuit confirmed that applicant admitted prior art (AAPA) may not form the basis of a validity challenge in an inter partes review (IPR).¹ The decision arose out of two IPRs filed by Apple challenging the validity of a Qualcomm patent directed to integrated circuit devices including “level shifters” that communicate between input/output devices and core devices.² The ground for invalidity on which Apple prevailed before the Board relied on AAPA (Fig. 1 of the patent and its accompanying description) in view of a prior art reference called Majcherczak.³

In the IPRs, Qualcomm did not contest that the combination of AAPA and the relied-upon prior art taught every element of the challenged claims. Qualcomm argued only that Apple’s validity challenge was flawed because patent owner admissions could not be relied upon in an IPR. The Board disagreed, reasoning that, under 35 U.S.C. § 311(b), “prior art consisting of patents or printed publications” includes AAPA because AAPA is prior art contained in a patent (i.e., the patent that is being challenged).⁴ Qualcomm appealed to the Federal Circuit.

A panel of the Federal Circuit rejected the Board’s conclusion that AAPA qualifies as “prior art consisting of patents or printed publications” because it is prior art contained in a patent. Instead, the panel reasoned that the “patents or printed publications” referenced in the statute must themselves be prior art to the challenged patent. The court explained that this understanding of “prior art consisting of patents or printed publications” aligns with prior judicial interpretations of identical language in 35 U.S.C. § 301(a), and noted that the Supreme Court and the Federal Circuit have previously understood the “patents and printed publications” referenced in § 311(b) to themselves be prior art.⁵

However, the panel was careful to explain that AAPA is not categorically excluded from an inter partes review.⁶ For example, AAPA may be used to provide a factual foundation as to what a skilled artisan would have known at the time of invention. It may also be used to supply a missing claim limitation. It may not, however, be used as the “the basis for” a validity challenge.

So the ultimate outcome of the case will turn on whether Apple’s petitions raise a § 103 challenge “on the basis of” the AAPA cited in its petitions, and the Federal Circuit remanded to the Board for resolution of that issue in the first instance. Therefore, the Board will have to decide whether Apple’s petition merely relies upon the AAPA to supply a missing limitation (a permitted use under U.S.C. § 311(b)), or whether the AAPA is so heavily relied upon that it impermissibly forms the basis of Apple’s validity challenge. However, the panel decision provides little assistance in determining where exactly that line lies.

On that issue, it may be important that the ground for unpatentability in Apple’s petitions is described as the AAPA in view of the Majcherczak prior art, as opposed to the prior art reference in view of the AAPA. This is because the primary precedent cited by the panel for the proposition that AAPA may be relied upon in an IPR to supply a missing claim limitation — Koninklijke Philips N.V. v. Google, LLC et al., 948 F.3d 1330 (Fed. Cir. 2020) — dealt with the argument that it would have been obvious to modify a prior art reference in view of the general knowledge of a skilled artisan. Therefore, the analysis (at least in this case) may turn on whether the challenger is arguing that it would have been obvious to modify AAPA in view of the prior art, or the other way around. But regardless how the case comes out, the decision serves as a helpful reminder that PTAB practitioners need to focus their arguments for unpatentability on prior art to the challenged patent and should, at most, rely on AAPA to supply a limitation that is otherwise missing from the prior art.

————————————————————–

¹ Qualcomm Inc. v. Apple Inc., Nos. 2020-1558 – 2020-1559, ECF No. 82, p. 3 Fed. Appx. 610 (Fed. Cir. 2022).

² Id.

³ Page 6

⁴ Page 8

⁵ Page 11

⁶ Page 13

Disclaimer

This blog is made available by �鶹��ý (“�鶹��ý” or “the Firm”) for informational purposes only. It is not meant to convey the Firm’s legal position on behalf of any client, nor is it intended to convey specific legal advice. Any opinions expressed in this article do not necessarily reflect the views of �鶹��ý, its partners, or its clients. Accordingly, do not act upon this information without seeking counsel from a licensed attorney. This blog is not intended to create, and receipt of it does not constitute, an attorney-client relationship. Communicating with �鶹��ý through this website by email, blog post, or otherwise, does not create an attorney-client relationship for any legal matter. Therefore, any communication or material you transmit to �鶹��ý through this blog, whether by email, blog post or any other manner, will not be treated as confidential or proprietary. The information on this blog is published “AS IS” and is not guaranteed to be complete, accurate, and or up-to-date. �鶹��ý makes no representations or warranties of any kind, express or implied, as to the operation or content of the site. �鶹��ý expressly disclaims all other guarantees, warranties, conditions and representations of any kind, either express or implied, whether arising under any statute, law, commercial use or otherwise, including implied warranties of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall �鶹��ý or any of its partners, officers, employees, agents or affiliates be liable, directly or indirectly, under any theory of law (contract, tort, negligence or otherwise), to you or anyone else, for any claims, losses or damages, direct, indirect special, incidental, punitive or consequential, resulting from or occasioned by the creation, use of or reliance on this site (including information and other content) or any third party websites or the information, resources or material accessed through any such websites. In some jurisdictions, the contents of this blog may be considered Attorney Advertising. If applicable, please note that prior results do not guarantee a similar outcome. Photographs are for dramatization purposes only and may include models. Likenesses do not necessarily imply current client, partnership or employee status.