Updated PTAB Guidance on Use of Applicant Admitted Prior Art in IPRs

Following the Federal Circuit’s decision in Qualcomm Inc. v. Apple Inc., 24 F.4th 1367 (Fed. Cir. 2022), on June 9, 2022, the USPTO Director Katherine K. Vidal issued an updated guidance memorandum to supersede the prior August 18, 2020 guidance on the treatment of applicant statements during an IPR .

Section 311(b) limits the prior art that may be used as “the basis” of an IPR proceeding to “patent[s] or printed publications.” However, IPR petitions sometimes rely on statements in the specification of the challenged patent, which are generally referred to as “admissions,” “applicant-admitted-prior-art,” or “AAPA.” The updated memorandum sets forth the extent to which admissions or AAPA may be used in IPR proceedings.

In Qualcomm, the court clarified that it is “impermissible for a petition to challenge a patent relying on solely AAPA without also relying on a prior art patent or printed publication.” On the other hand, if 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.

The updated memorandum provides guidance to litigants that admissions are “permissible evidence in an inter partes review for establishing the background knowledge possessed by a person of ordinary skill in the art” and “provide a factual foundation as to what a skilled artisan would have known at the time of invention.” For example, a patentee’s admissions can be used to: “(1) supply missing claim limitations that were generally known in the art prior to the invention (for pre-America Invents Act (AIA) patents) or the effective filing date of the claimed invention (for post-AIA patents); (2) support a motivation to combine particular disclosures; or (3) 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.”

In addition to assisting parties in crafting their IPR arguments, the updated guidance on AAPA also serves as a warning to patent applicants that admissions made in the specification could ultimately be used in future invalidity arguments.