CAFC Holds Applicant Admitted Prior Art Cannot Be The Basis Of An IPR Ground

• Published date: 14 February 2022
• Subject Matter: Intellectual Property, Patent
• Law Firm: Jones Day
• Author: Mr Robert M. Breetz (Robby), Christian A. Roberts and Matthew W. Johnson

Section 311(b) limits inter partes review to "ground[s] that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications." 35 U.S.C. ' 311(b) (emphasis added). An open question, however, was whether applicant admitted prior art ("AAPA") in a challenged patent could be used as the basis of inter partes review. The Court recently held that AAPA contained in the challenged patent cannot be the "basis" of a ground in an IPR because it is not in a document that is itself prior art. Qualcomm Inc. v. Apple Inc., No. 20-1558 at *10 (Fed. Cir. 2022).¹ AAPA, however, can be used as evidence establishing the background knowledge possessed by a person of ordinary skill in the art. Id. at *13.

In the underlying IPRs that led to Qualcomm, "Apple filed two petitions for inter parties review based on the same two grounds but each challenging different sets of claims in the '674 patent." Id. at *6 (footnote omitted). "Apple's second ground relied on AAPA'Figure 1 and its accompanying description in the '674 patent'in view of Majcherczak." Id. at *6 (footnote omitted). The Board reasoned that AAPA was permissible in inter partes review because AAPA is prior art that is contained in a patent. Id. at *8 (citing IPR2018-01315, Paper 26 at 18-19 (PTAB Jan. 3, 2020)).

Other Board panels, however, found the opposite. See, e.g., Sony Corp. v. Collabo Innovations, Inc., IPR2016-00940, Paper 7 at 30 (PTAB Oct. 24, 2016) (declining to institute on grounds based on AAPA alone). Still other panels allowed use of AAPA, but only in conjunction with other prior art patents and printed publications under ' 103. Cardiovascular Sys., Inc. v. Shockwave Med., Inc. IPR2019-00405, Paper 75, at 2-3, 35-36 (PTAB Jul. 8, 2020).

"Due to confusion in this area, the Director" issued a clarifying guidance memo on August 18, 2020. PTO August 18, 2020 Memorandum at 1. As previously mentioned, the PTO clarified that "while a variety of evidence is admissible for limited purposes, the focus''the basis''of every IPR must be 'prior art consisting of patents or printed publications.'" PTO Id. This guidance was consistent with the PTO's "practice in applying the materially-identical reexamination statute." Id. at 1-2. Though this guidance was binding on the PTAB, whether the Federal Circuit would agree was still an open question.

In Qualcomm, the Federal Circuit held that "'patents or printed publications,' that form the 'basis' of a ground for...