federal-circuit
The use of Applicant Admitted Prior Art in IPR Petitions
Admissions made by the patentee, either in the patent specification or during the course of prosecution, identifying a particular work as “prior art” can be relied upon for both anticipation and obviousness determinations. Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354 (Fed. Cir. 2003); Constant v. Advanced Micro-Devices Inc., 848 F.2d 1560, 1570 (Fed. Cir. 1988); see also Reading & Bates Construction Co. v. Baker Energy Resources Corp., 748 F.2d 645, 650 (Fed. Cir. 1984). However, whether such Applicant Admitted Prior Art (“AAPA”) can also be used as “prior art” in an inter partes review (“IPR”) is unclear because 35 U.S.C. Section 311(b) states that a “petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent … only on the basis of prior art consisting of patents or printed publications.” (emphasis added). Here, we explore how the Patent Trial and Appeals Board (“Board”) has considered AAPA when a Petitioner has relied upon AAPA as part of one or more of its grounds in its IPR petition requesting the Board invalidate a patent (“Grounds”). We conclude with our recommendations for both petitioners and patent owners based on how the Board has decided on this issue. As a part of this effort, we have reviewed all of the IPR petitions to date that have relied on AAPA as part of their Grounds. Our analysis identified 243 total petitions that utilized AAPA as a prior art reference, either as an anticipatory reference or as part of an obviousness challenge. Specifically, seven petitions relied on AAPA as anticipatory prior art and 241 petitions relied on AAPA as part of an obviousness challenge.1
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NEWSLETTER ARCHIVE
Volume 48, Issue 4
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Index
Community Calendar Read more >
Table of Contents
Message from the President Monica Grewal
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The Amendment of Trademark Law in Indonesia
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Deleted Teachings and Incorporation by Reference
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Save the Date: BPLA Annual Meeting
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The Constitutionality of Inter Partes Review Is Before the Supreme Court
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Invented Here! 2017 Recognition Event
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BPLA Committee Report
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Members On The Move
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The Federal Circuit Confirms a Return to Restrictive Patent Venue Requirements
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Officers and Board of Governors
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In memoriam of Stanley Abkowitz
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What Reviving the TTIP Agreement Could Mean for the Future of Geographical Indications
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The use of Applicant Admitted Prior Art in IPR Petitions
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Situations When Written Opinions of Counsel Could Spare You a Patent-Related Headache
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Job Listings
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Community Calendar
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Save the Date: Case Law Committee Meeting
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Message from the Editor-in-Chief
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Proposed BPLA By-law Amendment
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Minutes of the 2016 BPLA Annual Meeting
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The BPLA Files Amicus Curiae Brief in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, et al.
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