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Federal Circuit: Applicant Admitted Prior Art Cannot Provide a "Basis" for a Ground of Unpatentability in an IPR, But Can be Cited for Other Purposes
When Congress enacted the America Invents Act and created the inter partes review (IPR) proceeding, it limited an IPR petition to challenging patentability "only on a ground that could be raised under section 102 or 103 [i.e., anticipation and obviousness] and only on the basis of prior art consisting of patents or printed publications." 35 U.S.C. § 311(b). Can the patentee's admissions as to the scope and content of prior art in its own patent or patent application — commonly referred to as applicant admitted prior art (AAPA) — be used in an IPR? According to the Federal Circuit, the answer to that question is "yes" — but not as a "basis" for a ground of unpatentability.
In Qualcomm Inc. v. Apple Inc., Nos. 2020-1558, -1559, 2022 WL 288013 (Fed. Cir. Feb. 1, 2022), Apple filed two petitions for inter partes review, which challenged different claims of the same patent. Both petitions asserted the same two prior-art grounds against the different challenged claims: 1) obviousness over the combination of the "Steinacker" patent, the "Doyle" patent, and the "Park" publication; and 2) obviousness over the combination of the "Majcherczak" publication and AAPA consisting of "Figure 1 and its accompanying description" in the challenged patent.
In the instituted IPRs, the patentee Qualcomm "conceded that the combination of AAPA and Majcherczak teaches each element of the challenged claims." However, Qualcomm argued that such AAPA "cannot be used to challenge the validity of a patent in inter partes review" under the provisions of Section 311(b). The Patent Trial and Appeal Board (PTAB or Board) rejected that argument in its final written decisions and found the challenged claims to be unpatentable over the combination of the AAPA and the Majcherczak publication. The Board reasoned that the AAPA cited in the petition is prior art contained in a patent (as required by Section 311(b)) because the cited AAPA was disclosed in the challenged patent itself.
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