In Qualcomm, Inc. v. Apple, Inc., No. 20-1558 (Fed. Cir. Feb. 1, 2022), the Federal Circuit concluded that a patentee’s admissions concerning the content of the prior art, contained in the specification of the challenged patent, cannot serve as a ground to invalidate that patent in inter partes review. The court, therefore, vacated decisions of the PTAB canceling patent claims asserted by Qualcomm against Apple relating to “integrated circuit devices with power detection circuits for systems with multiple supply voltages.” In its petition for inter partes review, Apple asserted that Qualcomm, in its patent, “acknowledge[ed] that most of the limitations of the patent’s claims were already known.” Qualcomm appealed the Board’s decision, arguing that so-called ”applicant admitted prior art” (“AAPA”) cannot form the basis of inter partes review because it does not qualify as either a patent and or a printed publication under 35 U.S.C. § 311(b).
The Federal Circuit agreed, noting that Section 311 limits petitioners to challenges “under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” The Court held 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.” The Court concluded that admissions concerning the prior art, made in the challenged patent’s specification, are “not contained in a document that is a prior art patent or prior art printed publication,” as required. Descriptions of the prior art contained in the challenged patent are excluded from the permitted grounds. Id. at 11-12. In addition to the language of Section 311(b), the Federal Circuit relied upon U.S. Supreme Court precedent with respect to the terms “patents and printed publications,” and its own prior interpretations of similar statutory language found in 35 U.S.C. § 301(a) authorizing prior art submissions to the Patent Office.
[Section 311(b)] excludes any descriptions of the prior art contained in the challenged patent.
The court did, however, declare that admissions in the challenged patent concerning the teachings of the prior art would be permitted as “evidence of the general knowledge of a skilled artisan” to “supply a missing claim limitation or support a motivation to combine.” The court remanded for the PTAB to determine whether the AAPA was permissibly cited as support for the artisan’s general knowledge, or whether it “improperly formed the ‘basis’ of Apple’s challenge.”
The Federal Circuits decision illustrates the care petitioner’s should exercise in crafting their invalidity challenges. Petitioners must cross each “t’ and dot each “i” in articulating the basis of their challenges. Short-cuts, however attractive, must be avoided.