USPTO Issues Updated Guidance On Use Of Applicant Admitted Prior Art In IPR Proceedings

On June 9, 2022, the USPTO issued updated guidance on the use of applicant admitted prior art (AAPA) in IPR proceedings, expanding upon a similar memorandum issued under prior Director Iancu. The Memo clarifies that while "the basis" of an IPR proceeding is limited to "patents or printed publications," AAPA can be relied upon in combination with one or more patents or printed publications to support the petitioner's grounds of unpatentability. In other words, the petitioner cannot structure its ground of unpatentability such that the challenged patent is obvious in view of "AAPA," where AAPA is expressly a basis of unpatentability, but AAPA could be used as supporting evidence in furtherance of an obviousness combination in view of one or more patents or printed publications. This is consistent with the Federal Circuit's recent...