The Patent Trial and Appeal Board granted a request for rehearing of a final written decision in which it had originally determined that the challenged were not unpatentable. On rehearing, the board found that petitioner's reliance on applicant admitted prior art (AAPA) was proper because it was not the sole basis of any ground in the inter partes review proceeding.
Petitioner's obviousness grounds in the IPR relied on one or more prior art references in combination with AAPA, which included admissions in the specification of the challenged patent about prior art photo voltaic systems. Relying on a Guidance Memo from the USPTO Director, a PTAB panel found that because the petition relied on AAPA, and therefore did not rely on patents and printed publications to teach all the limitations, petitioner had not shown that the challenged claims were unpatentable.
Petitioner filed a request for rehearing and argued that its use of AAPA was consistent with the Director's Updated Guidance, which states that "[i]f an IPR petition relies on admissions in combination with reliance on one or more prior art patents or printed publications, those admissions do not form 'the basis' of the ground and must be considered by the Board in its patentability analysis." In opposition, patent owner argued that petitioner's use of AAPA in this proceeding was not proper because "it forms the basis of Petitioner's arguments" and because "there is no evidence that the asserted AAPA was known in the prior art." The PTAB panel sided with petitioner and in doing so explained that "AAPA is not the basis of this inter partes review proceeding" because the grounds "involve a combination of AAPA and prior art patents(s)," where the "AAPA is being properly used to supply the missing claim limitation." In support of this finding, the PTAB panel stated that the Federal Circuit "has held 'it is appropriate to rely on admissions in a patent's specification when assessing whether that patent's claims would have been obvious' in an inter partes review proceeding" (quoting Qualcomm, Inc. v. Apple, Inc., 24 F.4th 1367, 1375 (Fed. Cir. 2022)). After considering petitioner's AAPA, the PTAB panel determined that the challenged claims were unpatentable.
Notably, in finding the claims unpatentable, the PTAB disregarded patent owner's argument that there was "no evidence that the asserted AAPA was generally known in the prior art or was within the knowledge of an ordinarily-skilled artisan at the time of the invention." Petitioner challenged the board's consideration of this argument because patent owner did not make this argument in either its Response or Sur-Reply. Instead, it waited until the hearing to "re-characterize its admissions" to say that the AAPA was only known to the applicant, and was not known to a person of ordinary skill in the art. Here, the PTAB agreed with petitioner and did not consider patent owner's argument because "no new arguments" can be made at an oral hearing.
Practice Tip: Petitioners and patent owners in IPR proceedings should remain vigilant regarding the use of AAPA before the PTAB. AAPA can play a critical role in the ultimate determination by the board regarding the patentability of challenged claims. Under the PTAB's current guidance, AAPA may be properly used in combination with prior art patents and publications in order to provide missing limitations. But AAPA cannot alone form the basis of any ground in an IPR.
Solaredge Tech. Ltd. v. SMA Solar Tech. AG, IPR2020-00021, Paper 31 (PTAB October 25, 2022).
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