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

Visit the PTAB Litigation Blog.

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.

Read the full article at

Insights by Jones Day should not be construed as legal advice on any specific facts or circumstances. The contents are intended for general information purposes only and may not be quoted or referred to in any other publication or proceeding without the prior written consent of the Firm, to be given or withheld at our discretion. To request permission to reprint or reuse any of our Insights, please use our “Contact Us” form, which can be found on our website at This Insight is not intended to create, and neither publication nor receipt of it constitutes, an attorney-client relationship. The views set forth herein are the personal views of the authors and do not necessarily reflect those of the Firm.