June 28, 2022

Volume XII, Number 179

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June 27, 2022

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Federal Circuit Clarifies Applicant Admitted Prior Art Is Not a Basis for Inter Partes Review

In Qualcomm Incorporated v. Apple Inc., Nos. 20-1558, 20-1559 (Fed. Cir. Feb. 1, 2022), the Federal Circuit vacated and remanded decisions by the Patent Trial and Appeal Board (“the Board”) finding several claims of a Qualcomm’s patent unpatentable under 35 U.S.C. § 103.

The Federal Circuit held that the Board erroneously considered applicant admitted prior art (“AAPA”) to be “prior art consisting of patents or printed publications” as a “basis” in its inter partes review of the patent under 35 U.S.C. § 311(b). Specifically, the Federal Circuit relied on the legislative history of § 311(b), which indicated that to form the “basis” of a ground of inter partes review, the patent or printed publication must itself be a document that is prior art to the challenged patent. In this case, the Federal Circuit found that the AAPA could not be the “basis” because the AAPA is not a document separate from the challenged patent. However, the Court did not foreclose the consideration of AAPA entirely. While not as a “basis,” the Court noted, based on Federal Circuit precedent and legislative intent, that the AAPA may still be considered to some extent in an inter partes review.

© 2022 Finnegan, Henderson, Farabow, Garrett & Dunner, LLPNational Law Review, Volume XII, Number 41
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About this Author

Law Clerk

Angeline Premraj is a law clerk in Finnegan’s Washington, DC office.

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Kara Specht Patent Litigation Attorney Finnegan, Henderson, Farabow, Garrett & Dunner Law Firm Atlanta GA
Associate

Kara Specht focuses on patent litigation before district courts and before the International Trade Commission (ITC). Her practice covers a wide range of electronic and electrical technology areas related to computers, consumer electronics, and computer-implemented business methods.

Kara has experience in all aspects of patent litigation before district courts, the ITC, and the Federal Circuit. Before district court and the ITC, Kara has experience from both a plaintiff and defendant perspective, ranging from pre-filing planning and strategy,...

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Esther H. Lim Patent Litigation Attorney Finnegan Law Firm Washington, DC
Partner

Esther Lim has twenty-five years of experience in patent litigation, portfolio management, licensing, and counseling. She has litigated extensively before federal district courts, the International Trade Commission (ITC), and the U.S. Court of Appeals for the Federal Circuit (CAFC) in complex matters involving a wide range of technologies from electrical to mechanical to pharmaceutical. Esther served as the founding managing partner of Finnegan’s Shanghai office. She is the past president of the D.C. Bar with 110,000 members.

Over two decades of diverse professional endeavors and...

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Elizabeth Ferrill Patent Attorney Finnegan Law Firm
Partner

Elizabeth Ferrill is an “undisputed expert on design patents” who is “always updated and enlightening others with her deep knowledge,” “very involved in the design bar,” and “gives her clients an outstanding service” as noted in Intellectual Asset Management Patent 1000. She focuses her practice on all aspects of design patents, including prosecution, counseling, post-grant, and litigation.

Elizabeth counsels clients who hold design patents as well as those accused of infringement. She has experience with design patents related to consumer and industrial products, medical...

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