Patentee’s Admissions Of Obviousness Inadequate Foundation For Cancellation In Inter Partes Assessment – Mental Property


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Patentee’s Admissions Of Obviousness Inadequate Foundation For Cancellation In Inter Partes Assessment

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In Qualcomm, Inc. v. Apple,
, No. 20-1558 (Fed. Cir. Feb. 1, 2022), the Federal
Circuit concluded {that a} patentee’s admissions in regards to the
content material of the prior artwork, contained within the specification of the
challenged patent, can not function a floor to invalidate that
patent in inter partes overview. The court docket, due to this fact, vacated
choices of the PTAB canceling patent claims asserted by Qualcomm
in opposition to Apple regarding “built-in circuit units with
energy detection circuits for programs with a number of provide
voltages.” In its petition for inter partes overview, Apple
asserted that Qualcomm, in its patent, “acknowledge[ed] that
many of the limitations of the patent’s claims have been already
identified.” Qualcomm appealed the Board’s choice, arguing
that so-called “applicant admitted prior artwork”
(“AAPA”) can not kind the premise of inter partes overview
as a result of it doesn’t qualify as both a patent and or a printed
publication below 35 U.S.C. § 311(b).

The Federal Circuit agreed, noting that Part 311 limits
petitioners to challenges “below part 102 or 103 and solely
on the premise of prior artwork consisting of patents or printed
publications.” The Courtroom held that “the ‘patents or
printed publications’ that kind the ‘foundation’ of a floor
for inter partes overview should themselves be prior artwork to the
challenged patent.” The Courtroom concluded that admissions
in regards to the prior artwork, made within the challenged patent’s
specification, are “not contained in a doc that may be a
prior artwork patent or prior artwork printed publication,” as
required. Descriptions of the prior artwork contained within the challenged
patent are excluded from the permitted grounds. Id. at
11-12. Along with the language of Part 311(b), the Federal
Circuit relied upon U.S. Supreme Courtroom precedent with respect to
the phrases “patents and printed publications,” and its personal
prior interpretations of comparable statutory language present in 35
U.S.C. § 301(a) authorizing prior artwork submissions to the
Patent Workplace.

[Section 311(b)] excludes any descriptions of the prior artwork
contained within the challenged patent.

The court docket did, nonetheless, declare that admissions within the
challenged patent in regards to the teachings of the prior artwork would
be permitted as “proof of the final data of a
expert artisan” to “provide a lacking declare limitation or
assist[] a motivation to mix.” The court docket remanded for the
PTAB to find out whether or not the AAPA was permissibly cited as assist
for the artisan’s common data, or whether or not it
“improperly fashioned the ‘foundation’ of Apple’s

The Federal Circuits choice illustrates the care
petitioner’s ought to train in crafting their invalidity
challenges. Petitioners should cross every “t’ and dot every
“i” in articulating the premise of their challenges.
Brief-cuts, nonetheless enticing, have to be averted.

The content material of this text is meant to supply a common
information to the subject material. Specialist recommendation ought to be sought
about your particular circumstances.

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