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Fed Circuit Affirms Admitted Art Can’t Form “Basis” of IPR Challenge – But What’s a “Basis”? graphic

A decision from the Federal Circuit published February 1, 2022 vacated a Patent Trial and Appeal Board (PTAB) decision finding claims in a Qualcomm patent unpatentable. Apple had challenged Qualcomm’s claims as being obvious over applicant admitted prior art (AAPA) in view of a 2002 published patent application (Majcherczak). Qualcomm told the PTAB that AAPA is not “prior art consisting of patents or printed publications,” as required for an IPR under 35 U.S.C. § 311. The PTAB disagreed. Critically, the PTAB’s decision occurred before the Director of the U.S. Patent & Trademark Office (USPTO) issued guidance restricting the use of AAPA in IPRs. The Director ordered that AAPA cannot “form the basis” of an IPR challenge but could be used to (1) supply missing claim limitations, (2) support a motivation to combine references, or (3) demonstrate prior knowledge of an ordinarily skilled artisan.

The Federal Circuit agreed with the Director that § 311 does, in fact, prevent AAPA from being “the basis of a ground in an inter partes review, because it is not contained in a document that is a prior art patent or prior art printed publication.” Slip op. at 13. But since a petitioner “may rely on evidence beyond prior art documents in an [IPR], even if such evidence itself may not qualify as the ‘basis’ for a ground set forth in a petition,” the Court determined that AAPA could not be entirely excluded from consideration. Slip op. at 13-14. The Court remanded the case to the PTAB to figure out whether or not the AAPA “formed the ‘basis’ for Apple’s challenge.” Slip op. at 16.

Left unclear by both the Federal Circuit’s opinion and the Director’s earlier guidance is where the line is drawn between properly using AAPA in an IPR challenge and violating § 311. An anticipation or obviousness ground that relies solely on AAPA is unmistakably impermissible. But is it enough to pair AAPA with a patent or printed publication like Majcherczak? Probably not, as the Federal Circuit’s guidance to the PTAB was “to determine whether Majcherczak forms the basis of Apple’s challenge.” Slip op. at 16. Does that mean AAPA can never be the primary reference in an obviousness combination? If that were true, the Federal Circuit might have decided this case itself, rather than remand. For example, one could argue, using the Director’s guidance, that the AAPA in Apple’s challenge is supplying missing claim limitations or demonstrating prior knowledge of the components disclosed therein. Is it enough if Majcherczak supplies the majority of claim elements to the analysis? From the Federal Circuit’s description of Apple’s challenge, that does not appear to be true in this case.

The bottom line is the test for whether AAPA constitutes the “basis” of an IPR challenge remains relatively untested. We will need to await the PTAB’s decision on remand, or at least a decision on another case presenting the same question, to get more clarity on how AAPA can be used in an IPR challenge.

The team at Panitch Schwarze is dedicated to crafting effective and efficient solutions for succeeding in IPR and other post-grant proceedings before the PTAB.

Stephen Murray has over fifteen years of experience in preparing and prosecuting patent applications. He also has extensive experience in post-grant proceedings at the Patent Trial and Appeal Board, having successfully represented both petitioners and patent owners.

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