Kingbright Elecs. Co. v. Cree, Inc.

Addressing the statutory requirements for prior art in an inter partes review (IPR) petition, the Patent Trial and Appeal Board (PTAB or Board) dismissed the IPR petition, finding that written admissions in the challenged patent, without more, were not a proper ground of unpatentability. Kingbright Elecs. Co. v. Cree, Inc., IPR2015-00746 (PTAB, Aug. 20, 2015) (Turner, APJ.).

The petitioner’s IPR validity challenge was based on statements made in the patent itself as applicant-admitted prior art. In response, the patent owner argued that this ground was not based on prior art patents or printed publications, and therefore the petition failed to comply with the applicable statutory requirements. Specifically, under 35 U.S.C. § 311(b), “[a] petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” Further, under 37 C.F.R. § 42.104(b)(4), the petition “must specify where each element of the claim is found in the prior art patents or printed publications relied upon.”

In denying the petition, the PTAB explained that, without more, a statement in the specification that certain technology is prior art was not a valid ground of unpatentability. According to the PTAB, “Petitioner does not identify any specific portions of the patent documents mentioned in the cited section of the […] Patent as a basis for any asserted grounds of unpatentability, as noted by Patent Owner. [. . .] As such, Petitioner has not shown that [the applicant admitted prior art] is, or otherwise evidences, a prior art patent or printed publication.”

The PTAB also rejected the petitioner’s reliance upon declarations of experts and inventors submitted on behalf of the patentee in other proceedings, which asserted that certain technology was publicly known at the time of the patent filing. The petitioner admitted that the declarations themselves were not prior art, but in some instances cited to portions of the prior art. For example, one of the declarations cited to a published journal article. The PTAB found that the declaration did “not describe any specific statements in the journal article” and, as such, was not a “prior art patent or printed publication.” Another declaration referenced a Japanese patent, but there the PTAB found that the “cited patent is used only to support the testimony of the declarant and is not applied against the challenged claims with sufficient specificity.”

Practice Note: Where a patentee has admitted that a patent or printed publication is prior art or that certain subject matter is within the prior art, do not simply rely upon the admission. The IPR petition should set forth in detail where each element of the challenged claims can be found in a prior art patent or printed publication.