Federal Circuit Provides Guidance on Applicant Admitted Prior Art

A recent Federal Circuit decision in the case of Qualcomm v. Apple provides guidance on the treatment of Applicant Admitted Prior Art (AAPA) under 35 U.S.C § 311(b) in Inter Partes Review (IPR) proceedings.

Under 35 U.S.C § 311(b),

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.

Qualcomm appealed from two related IPR decisions of the Patent Trial and Appeal Board (PTAB) finding several claims of Qualcomm’s ’674 patent unpatentable under 35 U.S.C. § 103.

As the court noted, the patent at issue

is directed to integrated circuit devices with power detection circuits for systems with multiple supply voltages….. According to the ’674 patent, modern integrated circuits often contain multiple networks operating at different supply voltages. …For example, a core logic network may operate at a lower voltage, and an input/output network may simultaneously operate at a higher voltage….. Such a system can save power by allowing the broader circuit to power down a network, like the core logic network, when it is not needed.

Also,

The patent describes “level shifters” that communicate between the input/output devices and the core devices. …When the core devices are powered down, the connection between the core and input/output network through the level shifters can lead to problems. One such problem is stray currents causing the level shifters to trigger the input/output devices for transmission resulting in erroneous output signals from the circuit.

The patent describes a prior art method to remedy the stray current problem. It acknowledges that most of the limitations of the patent’s claims were already known.

The main dispute on appeal was whether AAPA constitutes “prior art consisting of patents or printed publications” under § 311(b) such that it may form “the basis” of a ground in IPR proceedings.

Apple argued that any “prior art”—including AAPA—contained in any patent or printed publication, whether or not the document itself was prior art, could be used as grounds for a challenge in IPR proceedings.

Qualcomm argued the PTAB’s reliance on AAPA ran afoul of 35 U.S.C. § 311(b), which limits an IPR petitioner to challenge claims as unpatentable “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.]

The court agreed with Qualcomm that the PTAB erred in concluding that AAPA constitutes “prior art consisting of patents or printed publications” under § 311(b) and vacated the PTAB’s decision. The court remanded for the PTAB to determine whether Apple’s petition nonetheless raised its § 103 challenge “on the basis of prior art consisting of patents or printed publications.”

The court noted:

At bottom, Section 311 provides a limit on what prior art can be the basis for an inter partes review challenge and both the courts and the PTO must adhere to that limit. As explained above, AAPA may not form the “basis” of a ground in an inter partes review, and it is therefore impermissible for a petition to challenge a patent relying on solely AAPA without also relying on a prior art patent or printed publication.