Summary
This Federal Circuit opinion reviews a Patent Trial and Appeal Board decision on remand regarding an inter partes review challenge to U.S. Patent No. 8,063,674. The central issue is whether applicant-admitted prior art can form the "basis" of an obviousness ground under 35 U.S.C. § 311(b). The court holds that the Board misinterpreted the statute by adopting an "in combination" rule, concluding instead that the plain language of § 311(b) restricts the basis of an IPR ground strictly to patents or printed publications. Accordingly, the court reverses the Board's final written decision.
Topics
Practice areas
Questions Presented
- Whether 35 U.S.C. § 314(d) barred judicial review of Qualcomm's challenge to the Board's consideration of Ground 2.
- Whether the Board correctly interpreted 35 U.S.C. § 311(b) to permit applicant admitted prior art to be included in an IPR ground whenever it was combined with prior art patents or printed publications.
- Whether the Board correctly determined that Apple's Ground 2 complied with § 311(b) despite Apple's express designation of applicant admitted prior art as part of the ground's basis.
Holdings
- Section 314(d) did not bar review because Qualcomm challenged the Board's patentability determination after institution and the permissible basis of a ground under § 311(b), not the threshold decision whether to institute the IPRs.
- The Board's 'in combination' rule was inconsistent with § 311(b). Applicant admitted prior art may be used in an IPR in some circumstances, but its combination with prior art patents or printed publications does not automatically establish that it is not part of the ground's basis.
- Ground 2 violated § 311(b) because Apple's petitions expressly identified applicant admitted prior art as part of the ground's 'Basis.' The Board therefore erred by considering Ground 2 and finding the challenged claims unpatentable under it.
Key quotations
“Under the plain meaning of § 311(b), the question is whether a petitioner has used AAPA as the basis, or part of the basis, of a ground—not whether the request relies on AAPA in combination with prior art patents or printed publications.” (at 18)
“But what is dispositive are express statements—as in Apple’s petitions—that AAPA is in the “Basis” of a ground.” (at 22)
Factual background
Qualcomm owns U.S. Patent No. 8,063,674, which concerns integrated circuit devices using multiple power supplies and level-shifter control circuitry. Apple challenged various claims as obvious in two IPR petitions, relying on applicant admitted prior art from the '674 patent in combination with the Majcherczak reference and, for some claims, the Matthews reference. Each petition expressly listed applicant admitted prior art as part of the 'Basis' of Ground 2.
Procedural history
Apple filed two petitions for inter partes review challenging claims of Qualcomm's '674 patent as obvious. The Board initially determined that applicant admitted prior art could form the basis of an IPR ground under 35 U.S.C. § 311(b), and found the challenged claims unpatentable under Ground 2. The Federal Circuit vacated and remanded in Qualcomm I, holding that applicant admitted prior art was not prior art consisting of patents or printed publications, although it could be used in limited circumstances. On remand, the Board applied an 'in combination' rule and again found the claims unpatentable under Ground 2. The Federal Circuit held the appeal reviewable, rejected the Board's statutory interpretation and application of § 311(b), and reversed.
Remand instructions
The Board should not have considered Ground 2 or determined that the challenged claims were unpatentable as obvious under Ground 2. Because Ground 1 was rejected and there were no other grounds, the Board should have determined that the challenged claims were not unpatentable.