Imagine That IP Law Blog

Applicant-admitted prior art (“AAPA”) refers to a situation in patent applications where the person or entity applying for a patent acknowledges the existence of prior art relevant to their invention. When an applicant admits prior art, they are essentially acknowledging that the invention they are seeking to patent is not entirely new or novel. By admitting the existence of prior art, the Applicant is disclosing that similar or related technologies or inventions already exist, which could potentially impact the patentability of their own invention.

In the United States, AAPA is construed broadly to include any “statement by an applicant in the specification or made during prosecution identifying the work of another as ‘prior art’ ... regardless of whether the admitted prior art would otherwise qualify as prior art under the statutory categories of 35 U.S.C. §102.” (MPEP 2129 Admissions as Prior Art [R-07.2022]). Accordingly, a statement made by the Applicant in the patent application or made to the Examiner during prosecution can be relied upon to deny the Applicant from being granted a patent or similarly utilized to invalidate a granted patent.

Including AAPA in a patent application presents both advantages and disadvantages for patent applicants. On the positive side, including AAPA allows applicants to utilize it as evidence to clarify subject matter that falls outside the claims' scope. This can be particularly helpful in scenarios where an Inter Partes Review (“IPR”) petitioner puts forth an excessively broad interpretation of the claims.

However, there are also drawbacks to including AAPA in a patent application. One such drawback is that it provides an IPR petitioner with convenient access to additional material that could potentially supplement the patents or printed publications that form the basis of an IPR challenge. This increases the likelihood of a petitioner finding supplementary evidence to strengthen their case against the patent.

Updated Director Memo On Use of AAPA in IPRs
Under 35 U.S.C. § 311(b), IPR challenges to invalidate a patent may be instituted only “on the basis of prior art consisting of patents or printed publications.” ( 35 U.S. Code § 311). However, the statute is silent as to whether AAPA constitutes a printed publication within the meaning of 35 U.S.C. § 311(b).

On June 9, 2022, U.S. Patent and Trademark Office Director Kathi Vidal issued the “2022 Updated AAPA Guidance Memo” (“the Memo”) regarding the use of AAPA in an IPR. The memorandum clarified that, in the context of 35 U.S.C. § 311, while AAPA can’t be the sole “prior art” cited as the basis of an obviousness argument, it can be used in combination with patents or printed publications to support a petitioner’s grounds of unpatentability. The Federal Circuit’s decision in Qualcomm Inc. v. Apple Inc., 24 F.4^th 1367 (Fed. Cir. 2022) supported this notion, stating that the basis of a ground for an IPR must be patents or printed publications, not the challenged patent itself.

The Memo emphasized that evidence of a skilled artisan’s knowledge is crucial for an obviousness analysis, and admissions in the specification can be used as evidence of the background knowledge possessed by a person skilled in the art. The Board should consider admissions when the petition combines them with reliance on prior art patents or printed publications.

Under the Memo, admissions may include statements from the specification of the challenged patent related to what was “conventional” or “well-known,” though the parties may dispute the significance of such statements including whether the statements actually constitute admissions or evidence of the background knowledge possessed by a person of ordinary skill in the art. However, as explained in the Memo, these admissions are limited to invalidity contentions under § 103 and can only be used to:

• supply missing claim limitations that were generally known in the art prior to the invention (for pre-AIA patents) or the effective filing date of the claimed invention (for post-AIA patents);
• support a motivation to combine particular disclosures; or
• demonstrate the knowledge of the ordinarily-skilled artisan at the time of the invention (for pre-AIA patents) or the effective filing date of the claimed invention (for post-AIA patents) for any other purpose related to patentability. (2022 Updated AAPA Guidance Memo)

As a result, the updated guidance provided clarity on the use of Applicant admitted prior art in IPR proceedings, allowing for its appropriate incorporation in combination with prior art patents or printed publications to establish unpatentability grounds.

SolarEdge Technologies v. SMA Solar Technology
On June 8, 2023, Director Vidal issued a sua sponte review of SolarEdge Technologies Ltd., v. SMA Solar Technology AG, IPR 2020-00021 in which the PTAB held that SolarEdge failed to show that any challenged claims of SMA’s patent were invalid under the guidance outlined in the Memo. Specifically, at issue in the sua sponte review were whether a statement made by SMA Solar (“Patent Owner”) constituted AAPA and whether the Patent Owner forfeited the right to argue that the AAPA was not “known” in the prior art

Procedural Posture
In March 2021, the Board issued a Final Written Decision finding that SolarEdge (“Petitioner”) had not shown that the challenged claims of U.S. Patent 8,922,049 were unpatentable because the Petitioner relied on AAPA as the basis for the challenges in the Petition. Id. at *2. The Board applied the guidance of the 2020 AAPA Guidance Memo and found that (1) the Petition improperly used AAPA as the “basis” for its unpatentability argument because the AAPA formed the “foundation” of the unpatentability argument, and (2) that Petitioner failed to establish that the AAPA was “well-known” or “conventional” as required by the 2020 AAPA Guidance Memo. Id. Following this decision, the Petitioner filed a rehearing request.

In March 2022, the Board issued a Rehearing Decision in which it considered the updated guidelines of the 2022 Updated AAPA Guidance Memo and the intervening Federal Circuit decision in Qualcomm Inc. v. Apple Inc., 24 F.4^th 1367 (Fed. Cir. 2022). The Board determined that the Petitioner’s use of AAPA in combination with prior art patents was not improper in light of the Memo and Qualcomm. Specifically, the Board found that the prior art patents formed the basis of the IPR, and the AAPA was merely used to provide the missing limitations. The Board also agreed that the Patent Owner forfeited the ability to argue that the AAPA was not “known” in the art and that the Board should not have addressed a “belatedly-raised argument.” Following this decision, the Patent Owner filed a rehearing reque

Sua Sponte Director Review
On review, the Director disagreed with the Board’s finding that the Patent Owner forfeited the ability to argue that the AAPA was “known” during its opposition to Petitioner’s rehearing request. However, the Director agreed that the Petitioner’s use of the AAPA in the IPR was appropriate in view of the 2022 Updated AAPA Guidance Memo and Qualcomm.

Specifically, the Director stated that, under the Memo, “[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.” Based on this guidance, the Director agreed that the Petitioner’s obviousness grounds based on AAPA in combination with prior art patents was not improper.

However, the Director disagreed with the Board on the issue of whether the Patent Owner forfeited the right to argue that the AAPA was not “known” in the art. Specifically, the Director reasoned that the Board sua sponte raised the issue of whether the AAPA was well-known through questions posed to counsel in its First Final Written Decision. Therefore, the Patent Owner should not have been precluded from arguing in opposition to Petitioner’s rehearing request.

Accordingly, in the sua sponte review, the Director reiterated that § 311(b) requires that at least one prior-art patent or printed publication form the “foundation or starting point” of the IPR, but does not foreclose AAPA from being utilized to demonstrate the knowledge of an ordinarily-skilled artisan.

For Petitioners
The Memo and the sua sponte review reiterate that AAPA cannot provide the basis for invalidity under 35 U.S.C. § 103. Accordingly, Petitioners should utilize AAPA, either included directly in the specification or in the file wrapper, to further buttress other patents and printed publications. For example, AAPA can be utilized to support the motivation to combine or to augment an expert’s assertion that something was conventional or well known in the art at the time of invention.

For Patent Owners
Since AAPA is “permissible evidence in an inter partes review for establishing the background knowledge possessed by a person of ordinary skill in the art” and “provide[s] a factual foundation as to what a skilled artisan would have known at the time of invention,” AAPA can be utilized to distinguish the challenged claims from the Petitioner’s cited art.

For example, AAPA can be utilized to demonstrate that the claims should not be constructed to read on the conventional prior systems. Specifically, the Federal Circuit explains that when the AAPA contained in “the specification makes clear that the invention does not include a particular feature, that feature is deemed to be outside the reach of the claims of the patent, even though the language of the claims, read without reference to the specification, might be considered broad enough to encompass the feature in question.” SciMed Life Sys. v. Advanced Cardiovascular Sys., 242 F.3d 1337, 1341 (Fed. Cir. 2001). Accordingly, a Patent Owner can successfully argue that the cited art teaches the same thing as the AAPA, and, therefore, the claims should be construed to not include the embodiments described as AAPA.