Does “Applicant Admitted Prior Art” Count as Prior Art in IPRs? Yes and No.

March 16, 2022

Many patent specifications describe the prior art before setting forth the claimed invention. This “applicant admitted prior art” can be used for prior art purposes in litigation.  See, e.g., PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342, 1362 (Fed. Cir. 2007) (“Admissions in the specification regarding the prior art are binding on the patentee for purposes of a later inquiry into obviousness.”). 

But can it be used in an IPR, and if so, to what extent?  The Federal Circuit recently clarified  this issue, holding that admitted prior art cannot form the “basis” for an IPR petition, but that it can be relevant to what one of ordinary skill in the art would have known at the time of the invention.  See Qualcomm Incorporated v. Apple Inc., 2022 WL 288013, __ F.4th __ (Fed. Cir. 2022).

In Qualcomm, Apple had filed an IPR based on both admitted prior art and a prior art patent publication, and that petition ultimately resulted in the PTAB invalidating several claims.  The technical details are not essential to the legal issue resolved by the court’s decision.  But, Qualcomm conceded that the admitted prior art and prior art patent publication disclosed all of the limitations in the claims held invalid. 

On appeal, Qualcomm argued that the IPR statute precluded using admitted prior art as a basis for an IPR.  See 35 U.S.C. 311(b).  Section 311(b) of the statute states (emphasis added): 

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 contended that the “basis” for an IPR must independently qualify as a prior art patent or printed publication.  Because admitted prior art comes from the challenged patent itself – and therefore does not qualify as prior art – Qualcomm contended that admitted prior art cannot be the basis for an IPR.  On this issue, Qualcomm was joined by the PTAB, which had issued guidance stating essentially the same thing in 2020.  See Director’s Guidance on the “Treatment of Statements of the Applicant in the Challenged Patent in Inter Partes Reviews Under § 311(b)” (Guidance). 

pple argued that admitted prior art can be the basis for an IPR because it is contained in a patent, even if that patent does not itself quality as prior art, i.e., because it is the challenged patent.

The Federal Circuit agreed with Qualcomm and the PTAB:

We agree with Qualcomm and the PTO 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.  That conclusion excludes any descriptions of the prior
art contained in the challenged patent.  This interpretation is
consistent with prior judicial interpretations of the statute and
represents a more natural reading of § 311(b).

The panel cited numerous cases for the proposition that the phrase “patents and printed publications” in § 311(b) must themselves be prior art.  The court also noted that this was true in other related statutes, that Congress is presumed to have used the term consistent with related provisions, and that Congress is further presumed to be familiar with court decisions construing those provisions.

However, even though applicant admitted prior art cannot form the “basis” for an IPR, the Federal Circuit concluded that it can be used in an IPR, as prior cases had held.  See, e.g., . Koninklijke Philips N.V. v. Google LLC, 948 F.3d 1330, 1339 (Fed. Cir. 2020) (“it is appropriate to rely on admissions in a patent’s specification when assessing whether that patent’s claims would have been obvious” in an IPR).  Specifically, 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, so the court held that admitted prior art may be used in that way in an IPR. 

In light of its holdings, the Federal Circuit vacated the PTAB decision invalidating the Qualcomm claims and remanded to the PTAB to reassess the basis for the Apple IPR. 

Now that the Federal Circuit has ruled on this issue, petitioners should not rely on admitted prior art for the “basis” for IPRs.  But once an IPR is initiated, admitted prior art may be relevant to an obviousness determination by demonstrating the knowledge of one of skill in the art.  Patentees should review petitions to ensure that they are complying with this dichotomy.  The Qualcomm decision is largely consistent with the Guidance issued by the PTAB, so practitioners who have been following that document are likely already complying with the new decision.

Author:  Jason Crotty and Ray Huang