On the first of February, in Qualcomm Inc. v. Apple Inc., the Court of Appeals for the Federal Circuit (“the CAFC”) vacated and remanded the Patent Trial and Appeal Board (“the Board”) on two inter partes review (“IPR”) decisions that held claims 1, 2, 5-9, 12, 13, and 16-22 of Qualcomm’s U.S. Patent No. 8,063,674 (“the ’674 Patent”) unpatentable as obvious.
Qualcomm’s ’674 Patent describes integrated circuit devices containing power detection circuits that can be used for systems with multiple supply voltages. For devices that operate multiple networks at different supply voltages (some of which may be quite high), the devices can save power by turning the power off for certain networks when they are not in use. For example, a device’s core logic network may require a low voltage, while a device’s input/output network may require a high voltage. The ’674 Patent in particular describes “level shifters” that communicate between input/output devices and core logic devices, and it identifies various problems that the level shifters may engender. Stray currents, for instance, may result in level shifters erroneously triggering input/output devices for transmission.
The “Background” section of the ’674 Patent describes a prior art method to solve the stray current problem through the use of power-on and power-off detectors and a power-on/power-off control (POC) signal. However, as expected, the ’674 Patent then goes on to diagnose various problems with this prior art solution and claim its own, ostensibly superior solution.
In 2018, Apple filed two petitions for inter partes review (IPR), each based on the same grounds but challenging different claims in the ’674 Patent. For ground one, Apple challenged the claims as unpatentable as obvious in view of two U.S. patents (Steinacker and Doyle) and one printed publication (Park). In a final written decision, the Board found Apple had not shown the claims to be unpatentable with ground one. For ground two, however, Apple relied on the aforementioned “Background” section of the ’674 Patent (the “applicant admitted prior art” or “AAPA”) in view of a U.S. Patent Application Publication 2002/0163364 to to Majcherczak et. al. (“Majcherczak”).
In response to the second ground, Qualcomm conceded that the combination of Majcherczak and the AAPA taught each element of the challenged claims, but Qualcomm contended AAPA cannot be used to challenge patent validity during IPR. The Board disagreed, stating, in pertinent part, that AAPA is included in Section 311 of the patent statute’s definition of “prior art consisting of patents or printed publications” because AAPA is prior art contained in a patent.
Although Qualcomm’s initially argued that AAPA cannot be considered at all in IPRs, it later stepped back its position to contend that AAPA cannot form the basis of a ground in an IPR. Related to this proceeding, the United States Patent and Trademark Office (“USPTO”), issued Director’s guidance agreeing with Qualcomm that AAPA does not fall within “prior art consisting of patents or printed publications,” while still allowing the use of AAPA in IPRs as evidence of the general knowledge of a skilled artisan. The USPTO did not take a position as to whether Apple’s use of AAPA in this case was impermissible, but instead requested the CAFC to remand to the Board to address the question in the first instance.
The main argument on appeal was whether AAPA constitutes “prior art consisting of patents or printed publications” such that it may form “the basis” of a ground in an IPR under Section 311(b) of the Patent Act. The CAFC agreed with Qualcomm, holding that AAPA does not fall within such a definition of “prior art” and cannot form the basis of a ground in an IPR.
In forming its analysis, the CAFC began with the Section 311(b) of the Patent Act, and the above-quoted language regarding what constitutes “the basis” of any “ground” in an IPR, and that the definition excludes any descriptions of prior art contained within the challenged patent. The CAFC noted that the Supreme Court and the CAFC itself have previously interpreted “patents and printed publications” under Section 311(b) as meaning prior art itself (not descriptions contained within a challenged patent). The CAFC referenced multiple cases supporting its proposition, including Return Mail, Inc. v. U.S. Postal Serv., 139 S. Ct. 1853 (2019) and In re Lonardo, 119 F.3d 960 (Fed. Cir. 1997).
The CAFC also referenced Congress’s intentions in enacting the America Invents Act, which created IPRs. Specifically, the CAFC considered Congress’s intentions when it drafted Section 311(b), which codified IPRs and uses identical language to Section 301(a). At the time of the AIA’s enactment, Section 301(a) had been interpreted as meaning “prior art consisting of patents or printed publications.” The CAFC reasoned that because Section 301(a) had been interpreted as such, and because Congress had based 311(b) on 301(a), that therefore Congress intended the same definition for “prior art and printed publications” to apply to Section 311(b).
The CAFC clarified that AAPA is not categorically excluded from an IPR proceeding. For example, admissions in a patent specification may be relied upon to determine whether a patent’s claims would have been obvious. As the CAFC noted in its opinion, “[T]he assessment of a claim’s patentability is inextricably tied to a skilled artisan’s knowledge and skill level.” Furthermore, relying on admissions in a patent specification maintains the “streamlined administrative proceeding” that Congress intended with IPRs because “[h]olding a patentee to descriptions of the prior art made in its specification does not implicate the type of fact-intensive inquiries Congress was seeking to avoid.”
Subsequently, the CAFC remanded to the Board to determine whether Majcherczak forms the basis of Apple’s challenge, or whether the AAPA forms the basis, which would impermissible violate the statutory limit of Section 311.
The exclusion of applicant admitted prior art as a basis for an IPR petition may come as a boon to patent owners, who may now be slightly less concerned about what they disclose in the “Background” section of their patent applications. However, applicants should take care that just because AAPA may not form the basis of an IPR petition does not mean it cannot play a pivotal evidentiary role in the proceeding.
 As the CAFC notes, the application that led to the ’674 Patent never contained a claim with an effective filing date on or after March 16, 2013 – therefore, the pre-AIA law of obviousness applies to the patent at issue.
 Qualcomm also challenged the constitutionality of the Board, but Qualcomm withdrew its request for relief after the Supreme Court’s decision in United States v. Arthrex, Inc., 141 S. Ct. 1970 (2021).