On June 9, 2022, the USPTO issued updated guidance on the use of applicant admitted prior art (AAPA) in IPR proceedings, expanding upon a similar memorandum issued under prior Director Iancu. The Memo clarifies that while “the basis” of an IPR proceeding is limited to “patents or printed publications,” AAPA can be relied upon in combination with one or more patents or printed publications to support the petitioner’s grounds of unpatentability. In other words, the petitioner cannot structure its ground of unpatentability such that the challenged patent is obvious in view of “AAPA,” where AAPA is expressly a basis of unpatentability, but AAPA could be used as supporting evidence in furtherance of an obviousness combination in view of one or more patents or printed publications. This is consistent with the Federal Circuit’s recent holding in Qualcomm that patents or printed publications forming the basis of a ground for IPR must themselves be prior art to the challenged patent (as opposed to the challenged patent itself). Qualcomm Inc. v. Apple Inc., 24 F.4th 1367 (Fed. Cir. 2022).
The Office stated that evidence of a skilled artisan’s knowledge remains fundamental to a proper obviousness analysis and such admissions are permissible evidence in an IPR proceeding for establishing the background knowledge possessed by a person of ordinary skill in the art and providing a factual foundation as to what a skilled artisan would have known at the time of the invention. The Office noted that the Board should determine whether the petition relies on admissions in the specification in combination with reliance on at least one prior art patent or printed publication and, if so, those admissions do not form the basis of the ground and therefore must be considered in the Board’s patentability analysis.
According to the updated Memo, admissions regarding the scope and content of prior art under § 103 can be used to “(1) supply missing claim limitations that were generally known in the art prior to the invention (for pre-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.” Admissions may include statements from the specification of the challenged patent related to what was “conventional” or “well-known,” though the parties may dispute the significance of such statements including whether the statements actually constitute admissions or evidence of the background knowledge possessed by a person of ordinary skill in the art.
The Memo further clarified that the Board should not exclude the use of admissions based on the number of claim limitations or claim elements the admission supplies or the order in which the petition presents the obviousness combination, but rather, should review whether the asserted ground as a whole as applied to each challenged claim as whole relies on admissions in the specification in combination with reliance on at least one prior art patent or printed publication. The Office noted that while 37 CFR § 42.104(b)(4) states that a petition “must specify where each element of the claim is found in the prior art patents or printed publications relied upon,” it does not foreclose the limited use of admissions as described in the June 9, 2022, Memo. That is, and so long as presented in the correct manner, the Board should not deny a petition in which an applicant points to general knowledge and/or a patentee’s admissions regarding the scope and content of the prior art to satisfy a claim limitation.