Applicant Admitted Prior Art in IPRs - QUALCOMM INCORPORATED v. APPLE INC, Federal Circuit Today
RICK NEIFELD
This decision leaves open what forms “'the basis' of any 'ground' in an inter partes review, within the meaning of 35 USC 311(b).
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
QUALCOMM INCORPORATED v. APPLE INC. 3
acknowledging that most of the limitations of the patent’s
claims were already known—and a prior art patent.
Qual-
comm argues the Board’s reliance on AAPA runs afoul of
35 U.S.C. § 311(b), which limits an inter partes review pe-
titioner 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 publi-
cations.” § 311(b) (emphasis added).
While, under § 311(b), AAPA contained in the
challenged patent is not “prior art consisting of patents or
printed publications,” it does not follow that AAPA is
categorically excluded from an inter partes review. Indeed,
Qualcomm concedes that our precedent permits
consideration of AAPA, at least to some extent, to challenge
patent claims in an inter partes review. See Appellant’s
Reply Br. 15.
We have held that “it is appropriate to rely on
admissions in a patent’s specification when assessing
whether that patent’s claims would have been obvious” in
an inter partes review proceeding. Koninklijke Philips N.V.
v. Google LLC, 948 F.3d 1330, 1339 (Fed. Cir. 2020) (citing
PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d
1342, 1362 (Fed. Cir. 2007) (“Admissions in the
specification regarding the prior art are binding on the
patentee for purposes of a later inquiry into
obviousness.”)).
At bottom, Section 311 provides a limit on what prior
art can be the basis for an inter partes review challenge and
both the courts and the PTO must adhere to that limit. As
explained above, AAPA may not form the “basis” of a
ground in an inter partes review, and it is therefore
impermissible for a petition to challenge a patent relying
on solely AAPA without also relying on a prior art patent
or printed publication. Here, we remand to the Board to
determine whether Majcherczak forms the basis of Apple’s
challenge, or whether the validity challenge impermissibly
violated the statutory limit in Section 311.
The opinion is at: https://cafc.uscourts.gov/opinions-orders/20-1558.OPINION.2-1-2022_1901450.pdf
Best regards, RICK
Rick Neifeld, Ph.D., Patent Attorney
Neifeld IP Law PLLC
9112 Shearman Street, Fairfax VA 22032-1479, United States
Mobile/Office: 7034150012
Fax: 15712810045
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