By Tom Engellenner
A recent decision by the Court of Appeals for the Federal Circuit (Fed. Cir.) in Qualcomm Incorporated v. Apple, Inc., Nos. 2020-1558, 2020-1559 (February 1, 2022) has held that “applicant admitted prior art” (AAPA) does not fall within the category of “patents or printed publications” and, hence, cannot be used by petitioners in inter partes review (IPR) proceedings as a basis for challenging issued U.S. patents.  Although the decision holds that admissions by patentees in their patent applications (or during patent prosecution at the Patent Office) cannot be a primary reference for proving a lack of novelty or obviousness, the decision leaves the door open for challengers to use such admissions to show the “general knowledge of a skilled artisan” during the IPR administrative trial.

The Applicant Admitted Prior Art (“AAPA”) doctrine has been used for many years both during examination of claims at the USPTO and by defendants in patent infringement suits.  Basically, the AAPA doctrine asserts that anything you say is prior art in your application can be used against you as prior art.  

This doctrine has been also used for nearly a decade in the administrative trials established by the America Invents Act (AIA), most notably in IPR proceedings where the AIA statute explicitly limits challenges to issued U.S. patents to those based on “prior art consisting of patents or printed publications.”  Various panels of administrative patent judges (APJs)  – there are over 300 APJs – have been all over the map on the issue of whether so-called “applicant admitted prior art” can be the basis for a novelty or obviousness determination, e.g. can prior art Reference A and AAPA be combined to render a claim obvious?

In the Qualcomm case, Apple challenged a Qualcomm patent on a power supply device that could supply power at two different voltages depending upon network needs.  The prior art asserted by Apple consisted of Figure 1 from the challenged Qualcomm patent itself, labelled “prior art,” and second reference (a prior published patent application “Majcherczak”).  Apple’s argued that it would have been obvious to add a feedback circuit as shown in Majcherczac into the overall circuit shown in Figure 1 and arrive at the claimed invention.  Quialcomm argued that it was impermissible to use Figure 1 of its own patent as prior art. 

The Federal Circuit panel agreed with Qualcomm, stating:

[The AIA] does not permit AAPA in this case to be 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. 

The Federal Circuit panel that decided this case also deemed it to be “precedential,” meaning that the three judges assigned this case concluded that the decision “significantly adds to a body of law.”

The Qualcomm decision should not be surprising.  Another Federal Circuit panel had broadly hinted at the limits of using AAPA back in January 2021 in the case of Koninklijke Philips v. Google, 948 F.3d 1330, (Fed. Cir. 2020), in which the judges held that “general knowledge” was not a patent or printed publication and, hence such general knowledge could not form the basis for invalidating a claim in an IPR proceeding.

Moreover, the Director of the U.S. Patent and Trademark Office (USPTO) had also issued a guidance memorandum on August 18, 2020 instructing PTAB judges that statements of the applicant in the challenged patent, e.g., AAPA, do not qualify as “prior art consisting of patents or printed publications,” but fall into the category of evidence the Board may consider for more limited purposes:

[W]hile a variety of evidence is admissible for limited purposes, the focus-“the basis”-of every IPR must be “prior art consisting of patents or printed publications.” 

The memorandum further explains that “[s]tatements in a challenged patent’s specification may be used, however, when they evidence the general knowledge possessed by someone of ordinary skill in the art. That evidence, if used in conjunction with one or more prior art patents or printed publications forming “the basis” of the proceeding under § 311, can support an obviousness argument. 

The Fed. Circuit’s Qualcomm decision echoes this memorandum in noting that:

As 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. . . .  Such uses include, for example, furnishing a motivation to combine, or supplying a missing claim limitation.  Thus, even though evidence such as expert testimony and party admissions are not themselves prior art references, they are permissible evidence in an inter partes review for establishing the background knowledge possessed by a person of ordinary skill in the art. “  [citations omitted]

Accordingly, AAPA is not useless in challenging a patent in an IPR or other AIA proceeding.  Petitioners challenging a patent should not use AAPA as a reference in formulating an obviousness rejection.  Instead, the challenger should find something that is truly a patent or printed publication that discloses the same thing (or something analogous) and then use AAPA to bolster the argument that the skilled artisan would have been motivated to combine the cited references.