UNITED STATES PATENT AND TRADEMARK OFFICE
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`UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND
`DIRECTOR OF THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`DATE:
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`August 18, 2020
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`MEMORANDUM
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`Members of th'
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`tent Trial and Appeal Board
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`Andrei Iancu L' /a,v...C-*----,
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`TO:
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`FROM:
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`Under Secreta a d Director
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`/ i
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`SUBJECT:
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`TREATMENT OF STATEMENTS OF THE APPLICANT IN THE
`CHALLENGED PATENT IN INTER PARTES REVIEWS UNDER§ 311
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`Introduction
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`Under 35 U.S.C. § 31 l(b), IPRs may be instituted only "on the basis of prior art
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`consisting of patents or printed publications." (Emphasis added.) As discussed below, different
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`Board panels have offered different interpretations of whether and how this provision limits an
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`IPR's petitioner's reliance on statements in the specification of the challenged patent. Such
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`statements are sometimes referred to as "applicantadmittedpriorart" or "AAPA." This
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`Memorandum sets forth the US PTO' s interpretation of§ 311 (b) in relation to statements of the
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`applicant, and the guidance in this Memorandum shall be followed by all members of the Patent
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`Trial and Appeal Board ("Board") facing this issue. 1
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`As explained below, under § 311, while a variety of evidence is admissible for limited
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`purposes, the focus-"the basis"-of every IPR must be "prior art consisting of patents or
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`printed publications." Consistent with USPTO's longstanding practice in applying the
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`1 This Memorandum does not apply to requests for ex parte reexamination made pursuant
`to 35 U.S.C. § 301, et seq.
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`P .O . Box 1450, Alexandria, Virginia 22313-1450 -WWW.USPTO.GOV
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`materially-identical reexamination statute, statements ofthe applicant in the challenged patent do
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`not qualify as "prior art consisting of patents or printed publications," but fall into the category
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`of evidence the Board may consider for more limited purposes.
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`This Memorandum is being issued under the Director's authority to issue binding agency
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`guidance to govern the Board's implementation of various statutory provisions, including
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`directions regarding how those statutory provisions shall be applied to sample fact patterns. See,
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`e.g., 35 U.S.C. 3(a)(2)(A); SOP2 at 1-2.
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`Background
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`'.35 U.S.C. § 3ll(b) provides:
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`(b) Scope.-
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`A petitioner in an inter partes review may request to cancel as unpatentable 1 or
`more claims of a patent only on a ground that could be raised under section 102 or
`103 and only on the basis of prior art consisting of patents or printed publications.
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`Section 311 (b) thus limits the prior art that may be used as "the basis" of an IPR proceeding to
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`"patents or printed publications." In the reexamination context, the Office has, in applying a
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`nearly-identical statutory provision, not permitt~d use of applicant admissions in the
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`specification of the challenged patent to be the basis of a reexamination, while still permitting
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`their use in combination with other prior art patents and printed publications. 35 U.S.C. § 302;
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`Manual for Patent Examining Procedure § 2258(1)(F)(l ).
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`Consistent with the AIA, the majority of Board panels have concluded that admissions by
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`the applicant in the specification of the challenged patent regarding what is in the prior art are
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`not prior-art patents that alone may be the basis for an IPR. See, e.g., Sony Corp. v. Collabo
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`Innovations, Inc., IPR2016-00940, Paper 7 at 30 (PTAB Oct. 24, 2016) (declining to institute on
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`grounds based on AAPA alone); Kingbright Electronics Co. Ltd., et al. v. Cree, Inc., IPR2015-
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`00741, Paper 8, at 5-6 (PTAB Aug. 20, 2015) (same); LG Electronics, Inc. v. Core Wireless
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`2
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`Licensing S.A.R.L., IPR2015-01987, Paper 7, at 18 (PTAB March 24, 2016) (same); but see Intel
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`Corp. v. Godo Kaisha IP Bridge 1, IPR2018-00951, Paper 7 at 22-24 (PTAB Dec. 4, 2018)
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`( concluding that AAP A may be used alone as the basis of an IPR). Other Board panels have
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`permitted use of such admissions only in conjunction with other prior art patents and printed
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`publications. See, e.g., Cardiovascular Sys., Inc. v. Shockwave Med., Inc., IPR2019-00405, Paper
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`75, at 2-3, 35-36 (PTAB Jul. 8, 2020) (rejecting argument that AAPA could not be used in
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`conjunction with various prior art patents and printed publications under § 103 in an IPR); Apple
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`Inc. v. Qualcomm Inc., IPR2018-01315, Paper 26, at 22 (PTAB Jan. 3, 2020) (holding
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`permissible § 103 theory based on prior art patent and AAP A); One World Techs., Inc. v.
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`Chamberlain Group, Inc., IPR2017-00126, Paper 56, at 41 (Oct. 24, 2018) (use ofAAP A in
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`conjunction with various prior art references permissible under§ 10-3).
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`Due to the confusion in this area, the Director, in consultation with the Commissioner for
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`Patents, the ChiefJudge of the PTAB, and the Acting General Counsel, issues this binding
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`guidance for the Board.
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`Analysis
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`The rationale of some Board decisions for permitting use of admissions in IPRs - that an
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`admission in the specification of the challenged patent satisfies § 311 (b) because it is "prior art"·
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`and found in a ''patent" -is not consistent with the statute. See, e.g., Shockwave, Paper 75, at 35-
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`36; Qualcomm, Paper 26, at 18-19; Chamberlain, Paper 56, at 36-37. The better reading of the
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`statutory language - ''prior art consisting of patents or printed publications" in § 311 (b) - is that
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`any patent that is used as the "basis of' a request for inter partes review must be a prior art
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`patent, not the challenged patent. 2 A patent cannot be prior art to itself, and thus the patent
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`3
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`challenged in the IPR cannot be said to be among the "patents" of which the "prior art"
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`"consist[s]." In other words, the challenged patent itself, or any statements therein, cannot be the
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`"basis" of an IPR.
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`For this reason, admissions by the applicant in the specification of the challenged patent
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`standing alone cannot be used as the basis for instituting an IPR, under either § 102 or § 103.
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`See, e.g., Sony Corp., Paper 7, at 30 (denying institution review of claim 1 as anticipated by
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`AAP A); LG Electronics, Inc., Paper 7, at 18 ( denying institution on ground alleging obviousness
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`of claims 16-28 based solely on AAP A). This is because, under § 311 (b ), "the basis" for
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`institution m~st be at least one prior art "patent[] or printed publication[]."
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`Statements in a challenged patent's specification may be used, however, when they
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`evidence the general knowledge possessed by someone of ordinary skill in the art. That evidence,
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`ifused in conjunction with one or more prior art patents or printed publications forming "the
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`basis" of the proceeding under § 311, can support an obviousness argument.
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`The use of evidence of the skilled artisan's general knowledge is foundational to a proper
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`obviousness analysis. See KSR Int'l Co. v. Teleflex, Inc., ~50 U.S. 398,401 (2007); Randall Mfg.
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`v. Rea, 733 F.3d 1355, 1362-63 (Fed. Cir. 2013); Dystar Textilfarben GmbH & Co. Deutsch/and
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`KG v. C.H Patrick Co., 464 F.3d 1356, 1367 (Fed. Cir. 2006). Recently, in Koninklijke Philips
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`v. Google, the Federal Circuit rejected an argument that because "general knowledge" is not a
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`2 Before IPRs or even reexamination proceedings existed, in the context of ex parte
`examination, the Court of Customs and Patent Appeals ("CCP A") held that:
`a statement by an applicant, whether in the application or in other papers
`submitted during prosecution, that certain matter is 'prior art' to him, is an
`admission that that matter is prior art for all purposes, whether or not a basis in
`[Section] 102 can be found for its use as prior art.
`In re Nomiya, 509 F.2d 566,571 n.5 (CCPA 1975); id. at 570-71 (holding that AAPA can be
`used as "evidence of obviousness under § 103"). While Nomiya characterized AAP A as "prior
`art for all purposes," it did not address the later-enacted language of § 311 (b ).
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`4
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`"patent[] or printed publication[]," it cannot be used in an IPR to supply missing claim elements.
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`See 948 F.3d 1330, 1337739 (Fed. Cir. 2020). The Federal Circuit explained that a properly
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`conducted § 103 inquiry ''necessarily depends" upon the knowledge possessed by the ordinarily­
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`skilled artisan and that such knowledge must be considered in an IPR, notwithstanding the
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`provisions of§ 3ll(b):
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`Although the prior art that can be considered in inter partes reviews is limited to
`patents and printed publications [under§ 311], it does not follow that we ignore
`the skilled artisan's knowledge when determining whether it would have been
`obvious to modify the prior art. Indeed, under 35 U.S.C. § 103, the obviousness
`inquiry turns not only on the prior art, but whether "the differences between the
`claimed invention and the prior art are such that the claimed invention as a whole
`would have been obvious . . . to a person having ordinary skill in the art to which
`the claimed invention pertains." 35 U.S.C. § 103. Regardless of the tribunal, the
`inquiry into whether any "differences" between the invention and the prior art
`would have rendered the invention obvious to a skilled artisan necessarily
`depends on such artisan's knowledge.
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`948 F.3d 1330, 1337 (Fed. Cir. 2020) (citations omitted). The Federal Circuit stressed that
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`assertions of general knowledge of the skilled artisan must be supported by evidence (in that
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`case, an expert declaration). Id. at 1338.3
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`Because Koninldijke Philips holds that evidence of general knowledge other than that
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`found in a prior art patent or printed publication can be used in an IPR, it follows that statements
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`in a challenged patent's specification can be used in an IPR to the extent they provide evidence
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`of the general knowledge of those with ordinary skill in the art. For example, specifications
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`sometimes include statements such as "It is well known that ...", "It is well understood that ...",
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`"One of skill in the art would readily understand that. .. "; or may describe technology as
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`3 While several panels of the Federal Circuit have assumed that AAPA can be used in
`IPRs, the issue was not presented or decided by the.Court. See Koninklijke Philips, 948 F.3d at
`1338-39; BIE Aerospace v. C&D Zodiac, 962 F.3d 1373, 1379 (Fed. Cir. 2020); Papst Licensing
`GMBH v. Samsung Electronics, 924 F.3d 1243, 1253 (Fed. Cir. 2019). "When an issue is not
`argued or is ignored in a decision, such decision is not precedent to be followed in a subsequent
`case in which the issue arises." Nat'l Cable TelevisionAss'n v. Am. Cinema Editors, 937 F.2d
`1572, 1581 (Fed. Cir. 1991).
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`5
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`"conventional," or "well-known." Thus, panels shall examine whether the petitioner uses the
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`statements in the specification as evidence of the general knowledge of a person of ordinary skill
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`in the art and in conjunction with at least one prior art patent or printed publication.
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`Use of such statements in the specification is consistent with § 311 (b) because such
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`statements can supply legally relevant information, while not. constituting the "basis" of the
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`obviousness ground raised under§ 103. The generally-understood meaning of"basis" supports
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`reading § 311 (b) to require that at least one prior-art patent or printed publication form the
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`"foundation or starting point" of the IPR, but not to foreclose consideration of other pertinent
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`pat~ntability information.4 Reading§ 31 l(b) to permit this use of the patent's specification in the
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`§ 103 context thus strikes the correct balance between the statute's express reference to the
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`unpatentability of claims under § 103-which legally requires consideration of the
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`c;>rdinarilyskilled artisan's knowledge-while maintaining fidelity to its limiting provisions. See,
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`e.g., Koninklijke Philips, 948 F.3d at 1337; see also KSR, 550 U.S. at 401.
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`Permissible uses ofgeneral knowledge of one having ordinary skill under § 103 include
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`(1) supplying missing claim limitations that were generally known in the art prior to the
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`invention (for pre-AIA patents) or the effective filing date of the claimed invention (for post-AIA
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`patents); (2) supporting a motivation to combine particular disclosures; or (3) demonstrating the
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`knowledge of the ordinarily-skilled artisan at the time of the invention (for pre-AIA patents) or
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`the effective filing date of the claimed invention (for post-AIA patents) for any other purpose
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`related to patentability. See Koninklijke Philips, 948 F.3d at 1337-1338. Of course, parties may
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`4 See, e.g., Black's Law Dictionary (11th ed. 2019), basis ("A fundamental principle; an
`underlying fact or condition; a foundation or starting point."); Merriam Webster: "(1): the bottom
`of something considered as its foundation; (2): the principal component of something; (3):
`something on which something else is established or based"; Cambridge Dictionary: ''the most
`important facts, ideas, etc. from which something is developed."
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`6
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`dispute the significance or meaning of statements in the specification or other evidence,
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`including disputing whether specification statements constitute evidence ofgeneral lmowledge.
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`For example, petitioners may rely on certain language in the specification identified supra (e.g.,
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`"It is well lmown that. ..") as evidence ofgeneral lmowledge, and patent owner can choose to
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`dispute whether the petitioner has accurately characterized the evidence it cites (e.g., offer
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`evidence or argument that a statement in the specification does not reflect general lmowledge ).
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`Either side may preseJ?,t expert testimony in support of its position. The Board shall adjudicate
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`such disputes and determine whether the specification ( or other evidence that is not "prior art
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`consisting ofpatents or printed publications") properly constitutes evidence of general
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`lmowledge. Such situations are likely to be highly fact-specific and the Board can address them
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`as they arise.
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`Other AIA provisions support using evidence outside a prior art patent or printed
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`publication when assessing§§ 102 or 103 issues in an IPR. For example, 35 U.S.C.
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`§ 312(a)(3)(B) states that an IPR petition can include "affidavits or declarations of supporting
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`evidence and opinions." Section 314( a) indicates that the decision whether to institute the
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`requested IPR should consider such supporting evidence. See 35 U.S.C. § 314(a) (the Director
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`may institute if "the information presented in the petition" meets the applicable standard)
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`(emphasis added). Similarly,§ 316(a)(3) permits the USPTO to promulgate regulations to permit
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`the submission of"supplemental information" by the petitioner. See 37 C.F.R. § 42.123
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`(providing for the filing of supplemental information). Consistent with § 311, these provisions
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`provide for an important, but limited, role for evidence other than prior art patents and printed
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`publications in IPRs.
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`7
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`This Memorandum's reading of § 311 (b) is also consistent with ex parte reexamination
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`practice, which likewise contains a statutory provision that limits the "basis" for a request to
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`"prior art consisting ofpatents and printed publications." 35 USC§§ 302, 301(a)(l). In
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`reexaminations, admissions "may not be the basis for establishing a substantial new question of
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`patentability. However, an admission by the patent owner of record in the file or in a court record
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`may be utilized in combination with a patent or printed publication." Manual for Patent
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`Examination Procedure § 2258 (l)(F)(l). The Federal Circuit has upheld the use of specification
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`statements in reexamination in combination with prior art patents or publications, albeit without
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`specifically addressing the limitation that the request be "on the basis ofprior art consisting of
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`patents and printed publications." See, e.g., In re NTP, Inc., 654 F.3d 1279, 1304 (Fed. Cir.
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`2011) (holding that AAP A provided substantial evidence that a particular claim limitation would
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`have been known to artisans at the time of the invention in ex parte reexamination). The same
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`rationale for using specification statements as evidence of "general knowledge" in IPRs applies
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`equally to its use in reexaminations.
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`While 37 C.F.R. § 42.104(b)(4) states that a petition "must specify where each element of
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`the claim is found in the prior art patents or printed publications relied upon," this does not
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`foreclose the limited use described herein. Section 42.104(b) specifies what petitions must
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`contain and requires specific information from the parties to ensure orderly proceedings, but does
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`not narrow the scope ofIPR petitions further than § 311 itself does. For example, § 42.104(b )(3)
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`requires that petitioners include their construction of claim terms. Nevertheless, the Board
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`regularly allows parties simply to assert that terms should simply be given their ordinary
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`meaning because § 42.104 does not require denial ofpetitions not meeting its requirements.
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`Thus, the Board need not deny a petition that properly points to general knowledge to satisfy a
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`8
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`claim limitation. See American Farm Lines v. Black Ball Freight Serv., 3_97 U.S. 532, 539 (1970)
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`("it is always within the discretion of a court or an administrative agency to relax or modify its
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`procedural rules adopted for the orderly transaction ofbusiness before it"); see also 37 C.F.R.
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`§ 42.S(b) (stating that "[t]he Board may waive or suspend a requirement ofparts 1, 41, and 42").5
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`Conclusion
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`In summary, the basis of an IPR must be one or more prior art patents or printed
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`publications. Statements in the specification of the patent being challenged are not prior art
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`patents or printed publications, and thus cannot form the basis of an IPR. Nevertheless, the Board
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`can also rely on the general knowledge ofa person with ordinary skill in the art in assessing the
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`patentability of the patent claims at issue. Statements made in the specification of the patent that
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`is being challenged in an IPR can be used as evidence of such general knowledge, and thus,
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`provided the basis of the IPR is one or more prior art patents or printed publications, can be used
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`to (1) supply missing claim limitations that were generally known in the art prior to the invention
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`(for pre-AIA patents) or the effective filing date of the claimed invention (for post-AIA patents);
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`(2) support a motivation to combine particular disclosures; or (3) demonstrate the knowledge of
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`the ordinarily-skilled artisan at the time of the invention (for pre-AIA patents) or the effective
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`filing date of the claimed invention (for post-AIA patents) for any other purpose related to
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`patentability.
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`5 While § 42.104 does not narrow the scope ofpermissible petitions under § 311, neither
`does it broaden it. The focus of every petition must be a prior art patent or printed publication.
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`9
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