Memo Responds to CAFC Refinement
At the close of former USPTO Director Iancu’s tenure, he issued a memo explaining that Applicant Admitted Prior Art (AAPA) should not be used as a basis of an AIA trial ground.
Today, new Director Vidal issued a revised memo to “provide more certainty and predictability in proceedings before the Patent Trial and Appeal Board (PTAB). This guidance supersedes the guidance previously issued by former Director Iancu.
Specifically, the updated guidance clarifies that AAPA does not improperly form the “basis” of an IPR under § 311 when the IPR petition relies on AAPA in combination with one or more patents or printed publications, and is consistent with the recent decision of the Court of Appeals for the Federal Circuit in Qualcomm Inc. v. Apple Inc., 24 F.4th 1367 (Fed. Cir. 2022). That is, as long as the AAPA is not an explicitly named component of a trial ground, it may still be used as an evidentiary basis underlying the ground.
You can find the full memo (here)