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.

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

² Id.

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