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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`UNDER SECRETARY OF COMMERCEFOR INTELLECTUAL PROPERTY AND
`DIRECTOR OF THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`DATE:
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`June 9, 2022
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`MEMORANDUM
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`TO:
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`FROM:__KatherineK.Vidal Votnurtnd.hliVida
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`Membersof the Patent Trial and Appeal Board
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`Under Secretary of Commerce forIntelledtudl Property and
`q
`Director of the United States Patent and Tra
`ark Office
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`SUBJECT:|UPDATED GUIDANCE ON THE TREATMENT OF STATEMENTS
`OF THE APPLICANT IN THE CHALLENGED PATENTIN
`INTER PARTES REVIEWS UNDER§ 311
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`Introduction
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`Under 35 U.S.C. § 311(b), inter partes reviews (IPRs) maybeinstituted only “on
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`the basis ofpriorart consisting of patents or printed publications.” Such statements are
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`sometimesreferred to as “admissions,”
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`33 66
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`“applicant-admitted-prior-art,” or “AAPA.” This
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`Memorandum sets forth the United States Patent and Trademark Office’s (USPTO)
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`interpretation of § 311(b) and the extent to which admissions may be used in IPR
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`proceedings. This Memorandum supersedes prior guidance, expressly the August 18,
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`2020, “Treatment of Statements of the Applicant in the Challenged Patent in Inter Partes
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`Reviews Under § 311” (2020 Guidance). The guidance in this Memorandum shall be
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`followed by all members of the Patent Trial and Appeal Board (PTABorBoard),!
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`' This Memorandum doesnot apply to requests for ex parte reexamination made pursuant
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`Petitioner Ensign
`Exhibit 1011 - Page 1 of 7
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`The Director issues this Memorandum underherauthority to issue binding agency
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`guidance to govern the Board’s implementation of statutory provisions. See, e.g., 35
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`U.S.C. 3(a)(2)(A); SOP2 at 1-2.
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`Guidance
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`35 U.S.C. § 311(b) provides:
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`(b) Scope.—
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`A petitionerin an inter partes review may requestto 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 ofpriorart consisting of patents or
`printed publications.
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`Section 311(b) limits the prior art that may be used as “the basis” of an IPR proceeding to
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`“patents or printed publications.”
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`After the issuance of the 2020 Guidance, the Federal Circuit issued its decision in
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`Qualcomm Ince. v. Apple Inc., 24 F.4th 1367 (Fed. Cir. 2022), addressing the extentto
`which sdinisctons can be used in IPR proceedings. The court concluded, consistent with
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`the 2020 Guidance,that under § 311, “‘patents or printed publications’ that form the
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`‘basis’ of a groundforinter partes review must themselvesbepriorart to the challenged
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`patent” and not the challenged patentitself or any admissions therein. Qualcomm, 24
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`F.4th at 1374. The court clarified that, because admissions are notprior art and therefore
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`cannot form the basis of an IPR,it is “impermissible for a petition to challenge a patent
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`relying on solely AAPA withoutalso relying on a prior art patent or printed publication.”
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`Id. at 1377; see, e.g., Sony Corp. v. Collabo Innovations, Inc., IPR2016-00940, Paper7,
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`at 30 (PTAB Oct. 24, 2016) (denyinginstitution of claim 1 as anticipated by AAPA); LG
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`Electronics, Inc. v. Core Wireless Licensing S.A.R.L., 1PR2015-01987, Paper 7, at 18
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`Petitioner Ensign
`Exhibit 1011 - Page 2 of 7
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`(PTAB March 24, 2016) (denying institution on ground alleging obviousnessof claims
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`16-28 based solely on AAPA).
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`Evidenceof the skilled artisan’s knowledge, however, remains fundamentalto a
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`properobviousness analysis. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 401
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`(2007); Randall Mfg. v. Rea, 733 F.3d 1355, 1362-63 (Fed. Cir. 2013) (“the knowledge
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`of suchan artisan is part of the store of public knowledge that must be consulted when
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`considering whether a claimed invention would have been obvious”); Dystar Textilfarben
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`GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1367 (Fed. Cir. 2006).
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`The Federal Circuit has explained that because a properly conducted § 103 inquiry
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`“necessarily depends” on the knowledge possessed bythe ordinarily-skilled artisan, such
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`knowledge must be considered in an IPR, notwithstanding the provisions of § 311(b):
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`Althoughthe prior art that can be considered in inter partes reviewsis
`limited to patents and printed publications [under§ 311], it does not
`follow that we ignore the skilled artisan’s knowledge when determining
`whetherit would have been obvious to modify thepriorart. Indeed, under
`35 U.S.C. § 103, the obviousness inquiry turns not only on the priorart,
`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 ofthe tribunal,
`the inquiry into whether any “differences” between the invention and the
`prior art would have rendered the invention obviousto a skilled artisan
`necessarily depends on such artisan’s knowledge.
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`See Koninklijke Philips v. Google, LLC, 948 F.3d 1330, 1337-39 (Fed. Cir. 2020).
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`Admissionsare “permissible evidence in an inter partes review for establishing
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`the background knowledge possessed by a personofordinary skill in the art” and
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`“provide a factual foundation as to what a skilled artisan would have knownat the time of
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`invention.” Qualcomm, 24 F4th at 1376.
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`Petitioner Ensign
`Exhibit 1011 - Page 3 of 7
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`Board panels should determine whetherthe petition relies on admissions in the
`specification in combination with reliance on at least one prior ait patent orprinted
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`publication. Qualcomm, 24 F4th at 1377. If an IPR petition relies on admissions in
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`combination with reliance on one or morepriorart patents or printed publications, those
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`admissions do not form “the basis” of the ground and must be considered by the Board in
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`its patentability analysis. Jd.
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`A patentee’s admissions regarding the scope and content ofthe priorart under
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`§ 103 can be used, for example, to: (1) supply missing claim limitations that were
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`generally knownin theart priorto the invention (for pre-America Invents Act (AIA)
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`patents) orthe effective filing date of the claimed invention (for post-AIA patents); (2)
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`support a motivation to combineparticular disclosures; or (3) demonstrate the knowledge
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`of the ordinarily-skilled artisan at the time of the invention (for pre-AIA patents) or the
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`effective filing date of the claimed invention (for post-AIA patents) for any other purpose
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`related to patentability. See Qualcomm, 24 F4th at 1376; see also Koninklijke Philips,
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`948 F.3d at 1337-1338.
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`Admissions may include statements in the specification of the challenged patent
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`such as “Tt is well knownthat... ,” “It is well understood that... ,” or “Oneof skill in
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`the art would readily understand that .
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`.
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`. ,” or may describe technology as “priorart,”
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`“conventional,” or “well-known.” See McCoy v. Heal Sys., LLC, 850 F. App’x 785, 789
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`(Fed. Cir. 2021) (non-precedential) (finding it was not an error for the Board in an IPR
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`proceedingto accept the specification’s own assertions of what was “conventional” and
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`therefore well knownin the art). Of course, parties may dispute the significance or
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`meaning of statements in the specification or other evidence, including disputing whether
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`Petitioner Ensign
`Exhibit 1011 - Page 4 of 7
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`specification statements constitute admissions or evidence of the background knowledge
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`possessed by a person ofordinaryskill in the art. For example, petitioners may rely on
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`certain language in the specification identified supra (e.g., “It is well knownthat... ”) as
`evidence of what a skilled artisan would have known atthe time ofthe invention, and a
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`patent ownercan chooseto dispute whetherthe petitioner has accurately characterized
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`the evidenceit cites (e.g., offer evidence or argumentthat a statement in the specification
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`does not reflect such knowledge oris not an admission). Either side may present expert
`testimony in support ofits position. The Board shall adjudicate such disputes and |
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`determine whetherthe specification (or other evidencethat is not “prior art consisting of
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`patents or printed publications”) properly constitutes evidence of the skilled artisan’s
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`knowledgeat the time of the invention. Suchsituationsare likely to be highly fact-
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`specific, and the Board can address them astheyarise.
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`Because the Federal Circuit has made clearthat it is appropriate in an IPR torely
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`on admissions in an obviousness analysis (Qualcomm, 274 F.4th 1376), Board panels
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`should not exclude the use of admissions based on the numberofclaim limitations or
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`claim elements the admission supplies or the order in which thepetition presents the
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`obviousness combination(e.g., prior art modified by admission or admission modified by
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`prior art). Rather, Board panels should review whetherthe asserted ground as a whole as
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`applied to each challenged claim as a whole relies on admissions in the specification in
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`combination with reliance on at least one priorart patent orprinted publication.
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`While 37 CFR § 42.104(b)(4) states that a petition “must specify where each
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`elementof the claim is foundin the priorart patents or printed publications relied upon,”
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`this does not foreclose the limited use of admissions described in this Memorandum.
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`Petitioner Ensign
`Exhibit 1011 - Page 5 of 7
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`Section 42.104(b) specifies what petitions must contain and requires specific information
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`from the parties to ensure orderly proceedings, but does not narrow the scope of IPR
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`petitions further than § 311 itself does. For example, § 42.104(b)(3) requiresthat
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`petitioners include their construction of claim terms. Nevertheless, the Board does not
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`denypetitions under § 42.104 in which petitioners assert that terms should be given their
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`ordinary meaning. Similarly, the Board should not denya petition in which an applicant
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`points to general knowledge and/ora patentee’s admissions regarding the scope and
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`contentofthe priorart to satisfy a claim limitation. See American Farm Lines v. Black
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`Ball Freight Serv., 397 U.S. 532, 539 (1970)(“it is always within the discretion of a court
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`or an administrative agency to relax or modify its procedural rules adopted forthe orderly
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`transaction of business beforeit”); see also 37 CFR § 42.5(b)(stating that “[t]he Board
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`may waive or suspend a requirement ofparts 1, 41, and 42”),
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`In addition to the use of admissions as described above, other AIA provisions
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`support using evidence outside of prior art patents or printed publications when assessing
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`§§ 102 or 103 issues in an IPR. Qualcomm, 24 FAth at 1375-1376. For example, 35
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`U.S.C. § 312(a)(3)(B) states that an IPR petition can include “affidavits or declarations of
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`supporting evidence and opinions.” Section 314(a) indicates that the decision whetherto
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`institute the requested IPR should consider such supporting evidence. See 35 U.S.C. §
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`314(a) (the Director may institute if “the information presented in the petition” meets the
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`applicable standard) (emphasis added). Similarly, § 316(a)(3) permits the USPTO to
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`promulgate regulations to permit the submission of “supplemental information” by the
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`* While § 42.104 doesnotnarrow the scope of permissible petitions under § 311, neither
`does it broadenit. The basis of every petition must be one or morepriorart patents or
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`Petitioner Ensign
`Exhibit 1011 - Page 6 of 7
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`petitioner. See 37 CFR § 42.123 (providing forthe filing of supplemental information).
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`Consistent with § 311, these provisions allow for an important, but limited, role for
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`evidence other than priorart patents and printed publications in IPRs. Qualcomm, 24
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`F.4th at 1375-1376.
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`Petitioner Ensign
`Exhibit 1011 - Page 7 of 7
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