In an August 18 memorandum1 , the U.S. Patent and Trademark
Office (USPTO) issued binding agency guidance on the proper role of
"applicant admitted prior art" (AAPA) in inter
partes review (IPR) proceedings. The memorandum clarified that
AAPA, which generally consists of the applicant's statements in
a challenged patent, cannot serve as the sole reference in an
invalidity ground because AAPA is not a "prior art patent or
printed publication" under 35 U.S.C. § 311(b). AAPA may,
however, be used to show "general knowledge" in the art
at the time of the invention if it is asserted in combination with
other, qualified prior art.
According to the memorandum, Patent Trial and Appeal Board
(PTAB) panels have been inconsistent in deciding whether
§ 311(b)—which allows requests for IPR "only
on the basis of prior art consisting of patents or
printed publications"—allows the use of AAPA. Panels
have generally interpreted the statute in three ways: (1) AAPA is
technically a
