Implications of Applicant Admitted Prior Art in Inter Partes Review Proceedings
Applicant admitted prior art (AAPA) is relied upon in a patent specification to draft a narrative and outline a problem being solved by a disclosed invention. Indeed, the nature of invention itself relies heavily on defining the problem to be solved by the invention. As a result, practitioners are challenged with balancing the amount of AAPA used in a specification so that the deficiencies in the available technologies are properly emphasized as opening the door for inventive activity, yet the disclosed AAPA does not adversely affect the scope and patentability of the claims during prosecution. While use of AAPA in prosecution is supported by various judicial precedents discussed in Manual for Patent Examination Procedure (MPEP) § 2129[1], a question has remained open regarding the usage of AAPA in Inter Partes Review (IPR) proceedings. A recent decision by the U.S. Court of Appeals for the Federal Circuit (CAFC) clarifies that AAPA plays only an informative role in IPR proceedings. Specifically, while AAPA may, for example, inform rationales for combinations of prior art references, AAPA itself may not form the basis of the grounds for an IPR.
AAPA is any statement made by the applicant that refers to what a person with ordinary skill in the art would have known at the time of the invention. These statements may be made in the specification or as attorney argument during the course of prosecution of the patent. Typically, AAPA includes any information outlined in the background section of a specification. However, AAPA also includes any statement made by the applicant that explicitly admits that a reference is prior art, or explains what a reference discloses or teaches or suggests, or admits that a technological art is obvious.
Turning to the subject of AAPA in the context of IPR proceedings, as stated in 35 U.S.C. § 311(b), “a petitioner in an IPR may request to cancel as unpatentable one or more claims of a patent only on a ground that could be raised under section 35 U.S.C. §§ 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” The question of whether APAA falls within the statutory language “only on the basis of prior art consisting of patents or printed publications” had not previously been authoritatively answered.
In Qualcomm Inc. v. Apple Inc.,[2] the CAFC has now answered the question in the negative. Qualcomm appealed seeking reversal of two final written decisions in two related IPR proceedings at the Patent Trial and Appeal Board (PTAB). In the initial IPR proceedings, Apple had petitioned for review of certain claims of U.S. Patent No. 8,063,674 (“the ’674 patent”) using a combination of AAPA described in the background section of the specification and a prior art patent as prior art support for the grounds of invalidity asserted in the petition. Upon review of these bases for invalidy, the PTAB agreed with Apple and found several claims as unpatentable under 35 U.S.C. § 103.
On appeal to the CAFC, Qualcomm referred to the above-quoted language of 35 U.S.C. § 311(b) and argued that only a patent or a printed publication may be used as the prior art basis of the IPR. Further, Qualcomm argued that because AAPA is not explicitly outlined in 35 U.S.C. § 311(b), Apple cannot use AAPA as the basis for challenging the claims of the ’674 patent. Apple contended that any prior art, including AAPA, that is contained in any patent or printed publication, regardless of whether or not the document itself is prior art, can be used as a basis for a validity challenge in IPR proceedings. Particularly, Apple noted that the ’674 patent falls under “any patent or printed publication” and thus, AAPA contained therein was available to be relied upon.
It is important to note that in the time between the PTAB’s final written decisions and the CAFC’s decision on appeal, the Director of the U.S. Patent and Trademark Office (USPTO) had issued guidance regarding the usage of AAPA in IPRs.[3] In summary, the Director explains that 35 U.S.C. § 311(b) should be interpreted to be constrained to patents and printed publications only and not AAPA. On appeal, the CAFC agreed with the position of Qualcomm and the Director that the PTAB incorrectly interpreted the 35 U.S.C. § 311(b) quotation of “prior art consisting of patents or printed publications” to include AAPA contained in the challenged patent itself. As such, the CAFC vacated the PTAB’s decisions and remanded the cases back to the PTAB for further proceedings.
While the decision in Qualcomm and the memorandum by the Director have at last provided some guidance on AAPA usage in IPR proceedings, there remain open questions regarding the risk of relying on AAPA in IPR proceedings at all. Specifically, the CAFC did not produce a test to determine whether AAPA constitutes the basis of an IPR challenge or is simply informative. Thus, practitioners should be cautioned to limit usage of, or reliance on, any AAPA in IPR petitions. Particularly, AAPA should never be used as the basis for a ground of invalidity asserted in an IPR petition; instead, AAPA should only at most be used for its informative background information.
Best Practices:
1. Practitioners should rely only on patents and printed publications as the bases for asserted grounds of invalidity in an IPR petition. While the use of AAPA should be avoided, if it is used at all, it should be solely to reinforce the interpretation of the prior art or to ascertain the motivations of a person of ordinary skill in the art.
2. Patent drafters should be cautioned to only include minimal detail in the background section of the specification, describing only that which is necessary to set the stage for the invention.
3. Consistent with patent prosecution best practices, practitioners should never admit that a reference may be obvious or analogous art.
4. Take note that the term “prior art” is not necessary for a statement in the specification or in prosecution to be used as AAPA. Terms such as “conventional,” “previous,” “known,” etc. are usually sufficient to classify a statement as AAPA. As such, drafters should be cautious about how the information following or associated with the aforementioned terms may be used against the patentee in prosecution or in an IPR proceeding, and such terms should be avoided altogether, generally speaking.
[1] Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354 (Fed. Cir. 2003) (“valid prior art may be created by admissions of parties”); Constant v. Advanced Micro-Devices Inc., 848 F.2d 1560, 1570 (Fed. Cir. 1988) (“Constant's own admission during prosecution that this could be accomplished by the routineer is strong evidence to the contrary and is binding upon him.”).
[2] Qualcomm Inc. v. Apple Inc., Appeal Nos. 2020-1558, -1559, __ F.4th __, 2022 WL 288013 (Fed. Cir. Feb. 1, 2022).
[3] USPTO Memorandum of August 18, 2020, “Treatment of Statements of the Applicant in the Challenged Patent in Inter Partes Reviews under § 311,” (Aug. 18, 2020), available at https://www.uspto.gov/sites/default/files/documents/signed_aapa_guidance_memo.pdf.
