Holding: Applicant admitted prior art cannot form the basis of a ground for petition in an IPR because it is not a prior art patent or printed publication. However, applicant admitted prior art can be considered during IPRs for certain uses, such as determining the general knowledge of a person of ordinary skill in the art.
Qualcomm appealed the final written decision of the PTAB in an IPR challenging the patentability of US Patent No. 8,063,674. Apple submitted several grounds for petition, including Ground 2, which was based on applicant admitted prior art (AAPA) in combination with a published patent application and a granted patent. In its initial decision, the PTAB found the use of applicant admitted prior art (AAPA) to be admissible under 35 U.S.C. § 311(b). However, the Federal Circuit vacated the PTAB’s decision, holding that AAPA is not “prior art consisting of patents or printed publications” as required by Section 311(b). On remand, the PTAB found that the AAPA did not form the basis of the grounds for petition, so the AAPA still complied with Section 311(b).
In considering the PTAB’s decision on remand, the Federal Circuit first analyzed whether the PTAB’s decision to consider Ground 2 during the IPR is reviewable. Section 314(d) states that a determination to institute an IPR is final and nonappealable. Apple argued that Qualcomm’s challenge concerns the PTAB’s decision to institute the IPR based on its interpretation of Section 311(b). However, Qualcomm’s challenge is not to the PTAB’s threshold decision to institute the IPR, but rather a challenge of the PTAB’s later determination of unpatentability based on Ground 2, which relied on the use of AAPA. This is a matter of Qualcomm presenting a question about how the PTAB’s review proceeded after the IPR was instituted, and thus is appealable.
The Federal Circuit then reviewed the PTAB’s decision that Ground 2, based on AAPA combined with a printed publication, satisfied the “prior art consisting of patents or printed publications” requirement of Section 311(b). Looking at the plain language of the statute, the Federal Circuit found that the Section 311(b) requires that an IPR ground asserting unpatentability can only be made on the basis of prior art including patents and printed publications, and AAPA is not a prior art patent or printed publication.
The PTAB interpreted Section 311(b) to allow AAPA when it is used in combination with at least one prior art patent or printed publication, as in that situation, the AAPA does not form the basis for the grounds for petition. However, the Federal Circuit found that a rule that states that AAPA can never form the basis of a ground for petition under Section 311(b) cannot be correct. This type of rule does not account for situations where the AAPA provides at least part of the basis for a ground for petition. Instead, the AAPA may be considered for certain uses, such as determining the general knowledge of a person of ordinary skill in the art, but cannot be the basis of a ground for petition.
In finding the challenged claims of the ‘674 Patent unpatentable, the PTAB erred by applying its incorrect statutory interpretation to conclude that the AAPA was not used as the basis for the petition. Merely including a patent or printed publication with AAPA as grounds for petition does not automatically relieve the AAPA as being a basis for the petition. In fact, in its petition, Apple expressly labeled the AAPA as being part of the basis for Ground 2. The Federal Circuit held that Apple should be held to its own phrasing in its petition. Since the AAPA was not a printed publication or patent and was stated as a basis for a ground for petition, Apple’s Ground 2 did not comply with Section 311(b), and the PTAB should have ruled those challenged claims to be not unpatentable.
Federal Circuit Precedential 
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