The U.S. Patent and Trademark Office issued updated guidance on acceptable uses of applicant admitted prior art (AAPA) in inter partes review (IPR) proceedings under 35 U.S.C. § 311.¹ This guidance replaces the guidance previously issued on August 18, 2020.

The updated guidance clarifies that AAPA does not impermissibly form the “basis” of an IPR under Section 311 when the IPR petition relies on AAPA in combination with one or more patents or printed publications and is consistent with the recent decision of the U.S. Court of Appeals for the Federal Circuit in Qualcomm Inc. v. Apple Inc.²

Practical Considerations

The Patent Office’s updated guidance takes an aggressive interpretation of the Federal Circuit’s Qualcomm decision. As mentioned in a previous newsletter,³ the court held that Section 311(b)’s “prior art consisting of patents and printed publications” only limited the use of AAPA as the sole basis of an IPR, but the court did not specifically define what it meant to form “the basis” of an invalidity ground in an IPR.

The practical results of this decision will be limited reliance on AAPA in IPRs, even taking into consideration the Patent Office’s updated guidance. Logically, AAPA should be easily accessible through other prior art discovery processes or tools since applicants are not likely to admit prior art very often unless the admission relates to information that is in fact prior art. That is, IPR petitioners should not need to resort to AAPA in most cases because the AAPA should be publicly available.

On the other hand, in the rare situation that AAPA is not available through other means/alternative prior art, patent challengers might want to consider ex parte reexamination and/or a declaratory judgment, since failure in an IPR that results in a written opinion upholding the validity of the patent can create a limited estoppel for the petitioner.

As a result of this decision, petitioners should be cautious when using AAPA in an IPR petition. Prospective IPR petitioners should carefully watch future decisions that may provide more clarity regarding these boundaries.

_{¹ Memorandum, Updated Guidance on Treatment of Statements of the Applicant in Challenged Patent in Inter Partes Reviews Under § 311 (June 9, 2022).}

_{² Qualcomm Inc. v. Apple Inc., 24 F.4th 1367, 2022 BL 57504, 2022 USPQ2d 110, 2022 WL 288013 (Fed. Cir. 2022).}

_{³ https://www.manatt.com/insights/newsletters/intellectual-property-law/inter-partes-review-may-not-rely-solely-on-admitte.}