Inter Partes Review May Not Rely Solely on Admitted Prior Art

Intellectual Property Law

In Qualcomm Incorporated v. Apple Inc.,1 the Federal Circuit held that applicant admitted prior art (AAPA) may not be the basis of an invalidity ground in an inter partes review (IPR), and therefore, an IPR petition cannot rely on AAPA without also relying on a prior art patent or printed publication.

Qualcomm owned U.S. Patent No. 8,063,674 (’674 patent) directed to an integrated circuit with power detectors for systems with several supply voltages. The ’674 patent disclosed level shifters that transfer data between input/output devices and core devices. When the core devices were turned off, the connection between the core and input/output network via the level shifters could cause stray currents that resulted in the level shifters triggering the input/output devices, producing incorrect output signals. The ’674 patent acknowledged a prior art method to resolve the stray current problem.

The ’674 patent disclosed that there were problems with the prior art solution in prior art Figure 1. The ’674 patent circumvented these problems by inserting a feedback network to enhance detection speed.

Claim 1 recited the following:

1. A multiple supply voltage device comprising:
 
a core network operative at a first supply voltage; and
 
a control network coupled to said core network wherein said control network is configured to transmit a control signal, said control network comprising:
 
an up/down (up/down) detector configured to detect a power state of said core network;
 
processing circuitry coupled to said up/down detector and configured to generate said control signal based on said power state;
 
one or more feedback circuits coupled to said up/down detector, said one or more feedback circuits configured to provide feedback signals to adjust a current capacity of said up/down detector;
 
at least one first transistor coupled to a second supply voltage, the at least one more first transistor being configured to switch on when said first supply voltage is powered down and to switch off when said first supply voltage is powered on;
 
at least one second transistor coupled in series with the at least one first transistor and coupled to said first supply voltage, the at least one second transistor being configured to switch on when said first supply voltage is powered on and to switch off when said first supply voltage is powered down;
 
at least one third transistor coupled in series between the at least one first transistor and the at least one second transistor.

Apple filed an IPR petition that relied on AAPA, i.e., prior art Figure 1 and the specification of the ’674 patent, in view of Majcherczak, U.S. Patent Application Publication No. 2002/0163364. Apple asserted that one of ordinary skill would have found it obvious to combine Majcherczak’s feedback transistor into the AAPA in the ’674 patent.

Qualcomm agreed that the AAPA and Majcherczak combination taught every element of the claims at issue. Qualcomm contended, however, that patent owner admissions cannot be used to challenge a patent in IPR. The Patent Trial and Appeal Board (Board) determined that Apple’s use of AAPA was proper and that the claims would have been obvious in view of AAPA combined with Majcherczak.

Qualcomm appealed, and the Federal Circuit reversed. Qualcomm argued on appeal that the Board’s use of AAPA violated 35 U.S.C. Section 311(b), which limits the petitioner to assert unpatentability “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.” The Federal Circuit explained that the issue on appeal was whether AAPA fell under “prior art consisting of patents or printed publications” under Section 311(b) such that it may form “the basis” of a ground in IPR.2 The court held that it did not.3

The court reasoned that the language of Section 311(b) restricted “the basis” of any “ground” in an IPR to “prior art consisting of patents or printed publications.”4 The court explained:

We agree with Qualcomm . . . that the “patents or printed publications” that form the “basis” of a ground for inter partes review must themselves be prior art to the challenged patent. That conclusion excludes any descriptions of the prior art contained in the challenged patent. This interpretation is consistent with prior judicial interpretations of the statute and represents a more natural reading of § 311(b).5

The court concluded that Section 311(b) does not permit AAPA to be the basis of an invalidity ground in an IPR, “because it is not contained in a document that is a prior art patent or prior art printed publication.”6 The court noted that while AAPA was not a prior art patent or printed publication, AAPA was not completely prohibited from being used in an IPR.7 In fact, Qualcomm admitted that AAPA could be used to some extent in an IPR. The court remarked that a petitioner may submit evidence beyond prior art documents in an IPR, such as expert opinions on the knowledge of one of ordinary skill in the art.8

According to the court, “[a]s a patentee’s admissions about the scope and content of the prior art provide a factual foundation as to what a skilled artisan would have known at the time of invention, . . . it follows that AAPA may be used in similar ways in an inter partes review.”9 Therefore, while examples such as expert testimony and party admissions are not considered prior art references, they can be used as evidence in an IPR to show background knowledge for a person of ordinary skill in the art. The court also reasoned that the use of AAPA in an IPR was consistent with Congress’ intent for an efficient administrative proceeding that precluded some of the more complex forms of prior art, such as commercial sales and public uses.10

Therefore, the court held that 35 U.S.C. Section 311 restricts what prior art can be the basis for an IPR. AAPA may not form the “basis” of a ground in an IPR, and therefore, AAPA cannot be used as the only basis without also relying on a prior art patent or printed publication. The court concluded the following:

Having determined that (i) the Board incorrectly interpreted § 311(b)’s “prior art consisting of patents or printed publications” to encompass AAPA contained in the challenged patent, but (ii) the use of AAPA can be permissible in an inter partes review, the next contested issue is whether AAPA improperly formed the “basis” of Apple’s challenge. Because the Board did not address this question in its final written decision, we remand to allow the Board to address this issue in the first instance.11

Moving Forward

Although the court held that Section 311(b)’s “prior art consisting of patents and printed publications” only limited the use of AAPA as the sole basis of an IPR, it remanded for the Board to determine whether the AAPA improperly formed the “basis” of the IPR. The practical result of this decision will be limited reliance on AAPA in IPRs.

While the court did not specifically define what it meant to form “the basis” of an invalidity ground in an IPR, the court’s overall tone and directive on remand for the Board to determine whether the AAPA formed the “basis” of the IPR is an indicator that AAPA can only be used to support prior art but likely cannot be used as prior art itself.

As a result of this decision, petitioners should take care when using AAPA in an IPR petition. At one end of the spectrum, AAPA should not be used as the main prior art reference for the ground of unpatentability. At the other end, AAPA may be used to support an expert declaration regarding knowledge or level of one of ordinary skill. Anywhere in between those uses appears to be up for grabs. Prospective petitioners should carefully watch future decisions that may provide more clarity regarding these boundaries.


Irah Donner is a partner in Manatt’s Intellectual Property practice and is the author of Patent Prosecution: Law, Practice, and Procedure, Eleventh Edition, and Constructing and Deconstructing Patents, Second Edition, both published by Bloomberg Law.

 


1 Qualcomm Inc. v. Apple Inc., 24 F.4th 1367, 2022 BL 57504, 2022 USPQ2d 110, 2022 WL 288013 (Fed. Cir. 2022).

2 Id., 24 F.4th at 1373.

3 Id., 24 F.4th at 1373.

4 Id., 24 F.4th at 1374.

5 Id., 24 F.4th at 1374.

6 Id., 24 F.4th at 1375.

7 Id., 24 F.4th at 1375.

8 Id., 24 F.4th at 1375.

9 Id., 24 F.4th at 1376 (citing Randal Mfg. v. Rea, 733 F.3d 1355, 1362-63, 108 USPQ2d 1727, 1732-33 (Fed. Cir. 2013) and McCoy v. Heal Sys., LLC, 850 F. App’x 785, 789 (Fed. Cir. 2021)).

10 Id., 24 F.4th at 1376.

11 Id., 24 F.4th at 1376-77.

manatt-black

ATTORNEY ADVERTISING

pursuant to New York DR 2-101(f)

© 2022 Manatt, Phelps & Phillips, LLP.

All rights reserved