Iancu Memorandum Withstands Appellate Scrutiny
Last summer, a guidance memo was issued to the Patent Trial & Appeal Board (PTAB) on the use of Applicant Admitted Prior Art (AAPA) in IPR proceedings. The memo (here) concluded that an inter partes review (IPR) must be based on a prior art patent or printed publication, and that admissions regarding prior art in the challenged patent cannot serve as the basis for instituting an IPR. But, the memo explained that such statements, may provide evidence of the general knowledge possessed by a person of ordinary skill in the art, and may be used to support an obviousness argument in conjunction with one or more prior art patents or printed publications.
So, AAPA can still be leveraged, just not as an actual prior art reference of a trial ground. Yesterday, the CAFC considered the subject of this memo and agreed with agency’s view.
The decision in Qualcomm Incorporated v Apple (here), much like the Director’s memo, focused on the statutory language ”prior art consisting of patents or printed publications.” The earlier memo explained:
[A}ny patent that is used as the “basis of’ a request for inter partes review must be a prior art patent, not the challenged patent. A patent cannot be prior art to itself, and thus the patent challenged in the IPR cannot be said to be among the “patents” of which the “prior art” “consist[s].” In other words, the challenged patent itself, or any statements therein, cannot be the “basis” of an IPR.
Likewise, the Court explained:
Our analysis begins with Section 311(b) of the Patent Act
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.
The language of § 311(b) limits “the basis” of any “ground” in an inter partes review to “prior art consisting of patents or printed publications.”
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. . . In other words, § 311(b) 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. . . .
[E]ven 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.
The Court’s view of the statute also hinges on the written admission not being “prior art” when made in a subject patent. The Court acknowledges that AAPA may be considered in patent reexamination as a component of a rejection (i.e., ground). But, distinguished that practice as being based on wording differences with 35 USC 303(a)— a strained read in my view.
Of course, excluding AAPA from consideration as a component of an IPR trial ground only creates more demand for patent reexamination, which AIA trials were designed to replace. As a reminder, the Recalibrating the America Invents Act (RAIA) would resolve this issue by qualifying AAPA as a component of an IPR trial ground.