Fish & Richardson
Director Vidal has issued Director Review decisions in the last two years regarding the proper use Applicant Admitted Prior Art(AAPA) during Patent Trial and Appeal Board proceedings. In both cases Director Vidal endorsed AAPA. Here is a brief overview of each case.
MED EL Elektromedizinische Gerate Ges.m.b.H. v. Advanced Bionics AG, IPR2020-01016 & IPR2021-00044 (PTAB August 22, 2022)
In IPR2020-01016 and IPR2021-00044, MED-EL Elektromedizinische Gerate Ges.m.b.H. “MED-EL” challenged claims 1-24 from a patent held by Advanced Bionics AG. MED-EL based its arguments on AAPA combined with prior art publications. The Board applied the 2020 AAPA Guidance, which outlines the USPTO’s interpretation of 35 U.S.C. SS 311(b), and determined that MED-EL had improperly relied upon AAPA to challenge the claims. Cir. 2022). In response to Qualcomm’s decision, the Director released new AAPA guidance (the 2022 AAPA Guidance) that superseded and replaced the 2020 AAPA Guidance on which the Board based its decision. The 2022 AAPA Guidance stated, that if an inter-partes review petition relies upon admissions in conjunction with reliance on prior art patents, or printed publications, then those admissions are not “the basis” for the grounds and must be taken into consideration by the Board when it conducts its patentability analysis. MED-EL relied upon AAPA in conjunction with prior art publications. AAPA therefore did not form the basis for MED-EL’s grounds, and must be taken into consideration by the Board during its patentability analysis. The Director thus vacated the determination in the final written decision that the petition improperly relied on AAPA.
SolarEdge Technologies Ltd. v. SMA Solar Technology AG, IPR2020-00021 (PTAB June 8, 2023)
In IPR2020-00021, SolarEdge Technologies (“SolarEdge”) filed a petition challenging claims in a patent owned by SMA Solar Technology AG (“SMA”). SolarEdge Technologies Ltd. v. SMA Solar Technology AG, IPR2020-00021 (PTAB June 8, 2023)
In IPR2020-00021, SolarEdge Technologies (“SolarEdge”) filed a petition challenging claims in a patent owned by SMA Solar Technology AG (“SMA”). The 2020 AAPA Guidance, and the holding in Qualcomm Inc. v. Apple Inc. 24 F.4th1367 (Fed. Cir. 2022), the Board found that the petition improperly used AAPA as the basis for its unpatentability argument because the AAPA formed the “foundation” or “starting point” of the unpatentability argument, and that the petitioner failed to establish that the AAPA was “well-known” or “conventional” as required by the 2020 AAPA Guidance.
SolarEdge then filed a rehearing request, arguing that the Board erred in finding that AAPA formed the “basis” of its grounds and that, since the patent owner had not made the argument that the AAPA system was not “well-known” prior to the oral hearing, the Board should not have considered that argument. The Board reversed their holding and determined that the petition’s use AAPA in conjunction with prior art patents wasn’t improper because the AAPA was used merely to provide the missing limits. The Board also agreed that the patent owner forfeited the ability to argue, and that the Board should not have addressed, the “well-known” argument.
Subsequently, SMA filed a request for rehearing and a request for Precedential Opinion Panel (POP) review, arguing that the 2020 AAPA Guidance misinterpreted and misapplied the holding of Qualcomm and constituted improper substantive rulemaking and that the rehearing decision’s reversal of its finding that the AAPA was not an admission was arbitrary and capricious.
The Director dismissed the POP request and granted sua sponte Director Review of the Board’s rehearing decision. The Director dismissed the POP request and granted sua sponte Director Review of the Board’s rehearing decision. SS311(b). The Director disagreed that the Board held that the patent owner had forfeited his “well-known” arguments and argued that it was possible for the Board to raise the issue sua sponte. The Director addressed the “well known” argument by concluding that the arguments and evidence relied on by the Board in its final written determination were sufficient to support the determination that the AAPA is “known” in art. The specification of the challenged Patent described the AAPA as “prior art” and this was an admission about what was “known” to the art.
