On February 1, in Qualcomm Inc. v. Apple Inc., the Federal Circuit held that Apple could not base an inter partes review (IPR) challenge of a Qualcomm patent solely on “applicant admitted prior art” (AAPA) found in the patent itself. The court looked carefully at 35 U.S.C. § 311(b), the statute that limits what a petitioner may use as a ground for an IPR, and held that AAPA does not constitute “prior art consisting of patents or printed publications” under the statute.
The appeal came after Apple successfully petitioned for inter partes review in the PTAB of a Qualcomm patent related to using a feedback network to increase performance of integrated circuits with power detection circuits. The PTAB found several claims of the Qualcomm patent unpatentable as obvious under 35 U.S.C. § 103. The PTAB relied on a prior art patent along with AAPA—statements the applicant made in the patent application itself acknowledging that certain limitations of the patent’s claims were known in the prior art.
On appeal, Qualcomm, Apple, and the U.S. Patent and Trademark Office (USPTO) offered competing views of the use of AAPA in IPR proceedings. According to 35 U.S.C. § 311(b), petitioners in inter partes reviews may only challenge patent claims “on the basis of prior art consisting of patents or printed publications.” Qualcomm argued that AAPA was neither a patent nor a printed publication, and therefore could not serve as the basis for an IPR. Apple argued that § 311(b) permits the use of any prior art, including AAPA contained in any patent or printed publication. The USPTO argued a middle ground that although AAPA does not fall within “prior art consisting of patents or printed publications,” it may be used as evidence of the general knowledge of a skilled artisan, which may be used to supply a missing claim limitation or support a motivation to combine.
The Federal Circuit agreed with Qualcomm and the USPTO that the “patents or printed publications” that form the “basis” of a ground for an IPR must themselves be prior art to the challenged patent. This excludes descriptions of the prior art contained in the challenged patent itself. In other words, § 311(b) does not permit AAPA to be the basis of a ground in an IPR because it is not contained in a document that is a prior art patent or prior art printed publication. However, the court tempered its decision by adding that although AAPA cannot be the sole basis of a ground in an IPR, AAPA is not categorically excluded from an IPR; admissions in the patent specification may be considered when assessing whether a patent’s claims would have been obvious such as for establishing the background knowledge possessed by a person of ordinary skill in the art. With this guidance, the Federal Circuit remanded the case to the PTAB for further consideration.
This decision provides important guidance on how AAPA may be used in an IPR. Challengers must avoid using AAPA as the sole basis for an IPR. And patent owners fending off an IPR challenge should contest grounds that rely solely on AAPA. This case also provides important guidance for patent applicants. Describing the state of the art at the time of the invention has been a common practice in patent drafting, but had been disfavored to the extent it could be used against the applicant in an IPR. This decision provides some shelter from IPR challenges based solely on the background information set forth in the patent itself.
