On August 18, 2020, Director Iancu of the U.S. Patent and Trademark Office (“USPTO”) issued a Memorandum entitled “Treatment of Statements of the Applicant in the Challenged Patent in Inter Partes Reviews Under § 311.” The Memo provides binding guidance concerning the USPTO’s view of the use of “applicant admitted prior art” (referred to as “AAPA” or “APA,” for short) by a petitioner to support a patentability challenge in an inter partes
35 U.S.C. § 311(b) provides, in relevant part, that IPRs may be instituted only “on the basis of prior art consisting of patents or printed publications.” Because of this statute, patentability challenges via IPRs are more limited than in district court. Accused infringers in district court, for example, may rely on any invalidity theory (including asserting that the patent claims are invalid based on patents or printed publications—like IPRs—as well as based on prior art products, lack of written description or enablement, or indefiniteness, among other theories).
As the memorandum notes, consistent with the America Invents Act (“AIA”) creating IPRs and its Section 311(b), the majority of Board panels hearing IPRs have concluded that admissions by the applicant in the specification of the challenged patent regarding what is prior art are not prior-art patents or printed publications that alone may be the basis for an IPR. However, a minority of panels have permitted AAPA to alone be used in a patentability challenge in an IPR (e.g.
, agreeing with a petitioner that the prior art—as admitted by the applicant in the patent specification itself—renders the patent claims anticipated or obvious). And, still, further, many panels have struck a middle ground, permitting the use of AAPA only together with other prior-art patents or printed publications.
Thus, because of the split-panel view, Director Iancu issued the memo to resolve this issue from the USPTO’s perspective.
First, the memo states that admissions by the applicant standing alone cannot be used as a basis for instituting an IPR, because such admissions themselves do not qualify as patents or printed publications under Section 311.
Second, the memo finds that such admissions may be used “when they evidence the general knowledge possessed by someone of ordinary skill in the art,” which, “if used in conjunction with one or more prior art patents or printed publications forming ‘the basis’ of the proceeding under § 311, can support an obviousness argument.”
According to the memo:
Use of such statements in the specification is consistent with § 311(b) because such statements can supply legally relevant information, while not constituting the “basis” of the obviousness ground raised under § 103. The generally-understood meaning of “basis” supports reading § 311(b) to require that at least one prior-art patent or printed publication form the “foundation or starting point” of the IPR, but not to foreclose consideration of other pertinent patentability information.
Reading § 31l(b) to permit this use of the patent’s specification in the § 103 context thus strikes the correct balance between the statute’s express reference to the unpatentability of claims under § 103—which legally requires consideration of the ordinarily skilled artisan’s knowledge—while maintaining fidelity to its limiting provisions.
Such knowledge of permitted use falls into three categories: (1) supplying 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) supporting a motivation to combine particular disclosures; or (3) demonstrating 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.
The memo provides useful clarity and resolves a Board panel split—at least until the Federal Circuit directly speaks on this issue.