A three-member panel at the Patent Trial and Appeal Board (PTAB) has held that an expert declaration which explains the significance of Applicant Admitted Prior Art (AAPA) is not “prior art consisting of patents or printed publications” as required by 35 U.S.C. § 311(b).Kingbright Elec. Co. et al. v. Cree, Inc., IPR2015-00741, Paper 8 (PTAB Aug. 20, 2015). Accordingly, the panel denied institution of an inter partes review (IPR) petition that asserted seven grounds of invalidity with each ground relying at least in part on such a declaration and AAPA. This decision has not been designated informative or representative.

The petition was brought by KingBright Electronics Company and SunLED Corporation to challenge Claims 1-26 of U.S. Patent No. 6,600,175 (the ’175 Patent). The petition raised seven grounds of invalidity under § 103(a), which the panel summarized in their institution decision as follows:

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The petition quotes several portions of the ’175 Patent’s specification as admissions that certain claim elements or features were known in the prior art. See Petition, Paper 3, at 4-10. For example, the specification stated that a specific type of LED was commercially available and that a European patent publication discussed the beneficial uses of certain materials in fluorescent lighting. An expert declaration was submitted with the petition which expanded upon these admissions. Crucially, each of the challenges in the table above were brought under § 103 and relied on the expert’s declaration to explain how the AAPA rendered obvious the challenged claims.

Patent Owner Cree, Inc. filed a preliminary response which disputed whether the petition met the requirements of § 311(b), which provides that an IPR petitioner may challenge claims as anticipated or obvious, but “only on the basis of prior art consisting of patents or printed publications” (emphasis added).

In denying institution, the panel agreed with the patent owner that the expert declaration explaining the AAPA, as used in the petition, did not qualify as prior art patents and printed publications and therefore did not comply with § 311(b). The panel further noted that the cited discussions of prior art patents did not rely on the patents themselves; rather, petitioners relied on the ’175 Patent’s characterization of those patents. Since each of the seven grounds relied at least in part on the expert declaration explaining the AAPA, the panel denied the petition in full.

This panel clearly prefers that a petitioner rely directly on a prior art patent or printed publication rather than a challenged patent’s characterization of that prior art. Statements in the specification of a challenged patent may be helpful to a petitioner by providing the background and context of an invention or by possibly providing motivations to combine prior art teachings. However, AAPA itself is difficult to use as an invalidating reference when additional details must be provided in an expert declaration.