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Federal Circuit Holds That Applicant Admitted Prior Art Cannot Be The Basis For An IPR Challenge
02/08/2022On February 2, 2022, the United States Court of Appeals for the Federal Circuit vacated a decision from the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office, finding that the Board erred in concluding that applicant admitted prior art (“AAPA”) constitutes “prior art consisting of patents or printed publications” under 35 U.S.C. § 311(b). Qualcomm Inc. v. Apple Inc., __ F.4th __ (Fed. Cir. Jan. 27, 2022).
35 U.S.C. § 311(b) provides that a “petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent 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.” (emphasis added).
Apple filed an inter partes review challenging a Qualcomm patent related to integrated circuit devices with multiple networks operating at different supply voltages (e.g., a core logic network might operate at a lower voltage than an input/output network). Such systems can save power by allowing certain networks to power down when not in use. One problem, however, with prior art systems (per the patent) was that stray currents during power-down mode can result in erroneous output signals. In the Background section, the patent explains that prior art solutions using power-up/down detectors can partially solve this problem, but not without wasted current. The patent purported to solve these problems by adding a feedback network to increase the speed of detection of a power-up/down event.
In its petition, Apple asserted, among other things, that the combination of the AAPA as stated in the Background of the patent, together with another reference (discussing feedback networks), rendered the claims obvious. The Board agreed and held that the claims were unpatentable, rejecting Qualcomm’s argument that the Board could not rely on AAPA under 35 USC 311(b).
The Federal Circuit determined that the Board’s decision was in error. Specifically, the court held that AAPA does not fall within the types of prior art permitted by Section 311(b), namely “prior art consisting of patents or printed publications.” Accordingly, AAPA cannot form the “basis” of a ground for IPR. The Federal Circuit also found that a petitioner (like Apple) may rely on evidence beyond prior art documents, even if such evidence may not qualify as the “basis” for a ground in the petition. For example, a petitioner can rely on the general knowledge of a skilled artisan to show a motivation to combine, or even to supply, a missing claim limitation. This distinction in the usage of AAPA is critical (and at this point, perhaps not clear cut). The court thus vacated and remanded back to the Board to determine whether the AAPA formed the “basis” of the challenge.
This is an interesting decision for PTAB practitioners. Of note, the Federal Circuit left unanswered the question about how to draw the line between prior art that forms the “basis” of an unpatentability ground, and one that merely touches on other components of an obviousness position including the general knowledge of a skilled artisan. Given that prior Federal Circuit decisions permitted non-prior art to supply a “missing claim limitation,” that line might be blurry and the subject of significant further litigation. And, until the Federal Circuit further explains how to draw this line, Petitioners should tread carefully when relying on AAPA or other non-prior art, including expert declarations.
