Federal Circuit: Applicant Admitted Prior Art Cannot Provide a “Basis” for a Ground of Unpatentability In an IPR, But Can be Cited for Other Purposes

March 4, 2022The Intellectual Property Strategist

When Congress enacted the America Invents Act and created the inter partes review (IPR) proceeding, it limited an IPR petition to challenging patentability “only on a ground that could be raised under section 102 or 103 [i.e., anticipation and obviousness] and only on the basis of prior art consisting of patents or printed publications.” 35 U.S.C. §311(b). Can the patentee’s admissions as to the scope and content of prior art in its own patent or patent application — commonly referred to as applicant admitted prior art (AAPA) — be used in an IPR? According to the Federal Circuit, the answer to that question is “yes,” but not as a “basis” for a ground of unpatentability.

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