Applicant admitted prior art (AAPA) memorandum

Superseded on June 9, 2022 by Updated applicant admitted prior art (AAPA) memorandum (June 9, 2022). The memorandum sets the USPTO's binding interpretation of 35 U.S.C. § 311(b) for statements of the applicant (AAPA) in the challenged patent: such statements, standing alone, cannot be the "basis" of an IPR ground under § 102 or § 103, because the basis must be at least one prior art patent or printed publication. Statements in the specification may, however, be used as evidence of the general knowledge of a person of ordinary skill, in conjunction with at least one prior art patent or printed publication forming the basis, to supply missing limitations, support a motivation to combine, or show the skilled artisan's knowledge for other patentability purposes. Petitioners may not build a ground on AAPA alone, but may use specification statements such as "well known" or "conventional" as general-knowledge evidence alongside a prior art patent or printed publication. Patent owners may dispute whether a specification statement actually reflects general knowledge, and either side may offer expert testimony; the Board decides these fact-specific disputes. The memorandum rests on § 311(b), § 103, KSR, Koninklijke Philips v. Google (948 F.3d 1330), the reexamination statutes and MPEP § 2258, and says it is issued under the Director's authority under 35 U.S.C. 3(a)(2)(A) and SOP2. It also explains that 37 C.F.R. § 42.104(b)(4) does not bar this use, citing 37 C.F.R. § 42.5(b). WHAT IT DOES: Concludes that the challenged patent and statements in it cannot be the "basis" of an IPR, since a patent cannot be prior art to itself, so AAPA alone cannot support institution under § 102 or § 103. Allows specification statements as evidence of general knowledge when used with at least one prior art patent or printed publication forming the basis. Panels must examine whether the petitioner uses the statements as general-knowledge evidence in conjunction with such a reference. Permitted uses are (1) supplying missing limitations generally known in the art, (2) supporting a motivation to combine, and (3) showing the skilled artisan's knowledge for any other patentability purpose. Parties may dispute the meaning or significance of the statements and offer expert testimony, and the Board adjudicates. The Board need not deny a petition under 37 C.F.R. § 42.104(b)(4) for pointing to general knowledge. WHO AND WHEN: Dated August 18, 2020, addressed to the members of the Patent Trial and Appeal Board; it is binding guidance to be followed by all Board members facing the issue in inter partes reviews under § 311. Footnote 1 says it does not apply to requests for ex parte reexamination under 35 U.S.C. § 301 et seq. The memorandum states no separate effective date. KEY QUOTE: "In other words, the challenged patent itself, or any statements therein, cannot be the "basis" of an IPR." (p. 4) EARLIER GUIDANCE AFFECTED: It resolves differing Board panel interpretations, rejecting the rationale in Shockwave, Qualcomm and Chamberlain that an admission is a "patent" and "prior art" satisfying § 311(b), and the view in Intel v. Godo Kaisha IP Bridge 1 that AAPA may be used alone. It follows Sony, Kingbright and LG Electronics (no institution on AAPA alone), and is consistent with MPEP § 2258(I)(F)(1) on reexamination. It notes In re Nomiya did not address § 311(b). PRACTICE TIP: Petitioners should anchor every ground in at least one prior art patent or printed publication and present specification statements only as general-knowledge evidence, supported by expert testimony; patent owners should contest whether a statement truly reflects general knowledge and challenge any ground that rests on AAPA alone. Issued by Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.