On August 18, 2020, the USPTO issued guidance on § 311(b)’s institution requirement that IPR’s may only be petitioned “on the basis of prior art constisting of patents or printed publications” and how this applies to statements of the applicant in the specification.
The use of statements like these is referred to as ‘Applicant-Admitted Prior Art’ or APAA. Under the new guidance, APAA may not be used as the basis for an IPR but may still be permissible for other evidenciary purposes.
Previously, some Boards allowed the use of APAA under the logic that “it is ‘prior art’ and found in a ”patent’. See, e.g., Cardiovascular Sys., Inc. v. Shockwave Med., Inc., IPR2019-00405, Paper 75, at 35-36 (PTAB Jul. 8, 2020); Apple Inc. v. Qualcomm Inc., IPR2018-01315, Paper 26, at 18-19 (PTAB Jan. 3, 2020); One World Techs., Inc. v. Chamberlain Group, Inc., IPR2017-00126, Paper 56, at 36-37 (Oct. 24, 2018) . As the Guidance explains, this interpretation is inconsistent with the statute, which is more accurate read to mean “any patent that is used as the “basis of’ a request for inter partes review must be a prior art patent, not the challenged patent.” Guidance at 3.
As a result, the PTAB will no longer allow APAA as the basis for a petition, but will allow its use for the following three purposes:
“(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 ofthe 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 ofthe invention (for pre-AIA patents) or the effective
filing date ofthe claimed invention (for post-AIA patents) for any other purpose related to
patentability”.” Guidance at 9.