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CAFC Holds Applicant Admitted Prior Art Cannot be the Basis of an IPR Ground, PTAB Litigation Blog

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Section 311(b) limits inter partes review to “ground[s] that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.”  35 U.S.C. § 311(b) (emphasis added).  An open question, however, was whether applicant admitted prior art (“AAPA”) in a challenged patent could be used as the basis of inter partes review.  The Court recently held that AAPA contained in the challenged patent cannot be the “basis” of a ground in an IPR because it is not in a document that is itself prior art.  Qualcomm Inc. v. Apple Inc., No. 20-1558 at *10 (Fed. Cir. 2022).[1]  AAPA, however, can be used as evidence establishing the background knowledge possessed by a person of ordinary skill in the art.  Id. at *13.

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