Introduction
Acting Director of the USPTO, Coke Morgan Stewart, issued a memorandum last week that will change the way petitioners levy challenges to patents via inter partes review (IPR).[1] The change will apply to any petition for IPR filed on or after September 1, 2025.
Overview of the 2025 Memorandum
The 2025 Memorandum curbs the use of applicant admitted prior art (AAPA), expert testimony, and general knowledge evidence to establish the basis of a challenge in an IPR petition.[2] The USPTO institutes this change by rescinding its waiver of 37 C.F.R. § 42.104(b)(4), which holds that an IPR petition “must specify where each element of the claim is found in the prior art patents or printed publications relied upon.”[3]
Because AAPA, expert testimony, and evidence of general knowledge or ordinary skill do not constitute prior art patents or printed publications, petitioners can no longer use them to provide a claim element when setting forth the basis of their challenge.[4] The USPTO states that the change will “provide a clear means for (i) identifying the petitioner’s legal and factual basis for satisfying the threshold for instituting IPR, and (ii) providing the patent owner with notice as to the basis for the challenge to the claims.”[5]
This guidance does provide clarity by establishing a bright-line rule that petitioners will follow when setting forth the basis of their challenge, but there remain unresolved issues in this area that patent practitioners and innovators should consider.
In prior memoranda, the USPTO permitted the use of AAPA and like-evidence, provided it did not make up the entirety of the basis for a challenge.[6] The guidance then in effect (and now superseded) was that this evidence could only establish the basis of a challenge when asserted “in combination with reliance on at least one prior art patent or printed publication.”[7] Basis language like, “Prior art reference X in view of AAPA” (or vice versa) was ostensibly proper under the USPTO’s so-called, “combination rule,” because AAPA and like-evidence “can supply legally relevant information, while not constituting the ‘basis’ of the obviousness ground raised under § 103.”[8]
However, in the case of Qualcomm Inc. v. Apple Inc., 134 F.4th 1355 (Fed. Cir. 2025), to which the Acting Director of the USPTO intervened, the Federal Circuit disagreed:
[T]he plain language of § 311(b) limits “the basis” to “prior art consisting of patents or printed publications.” The statute is clear. The Board exceeded this statutory limit by determining that the mere combination of AAPA with prior art patents or printed publications automatically excludes AAPA from the basis of a ground…. [T]he question is whether a petitioner has used AAPA as the basis, or part of the basis, of a ground—not whether the request relies on AAPA in combination with prior art patents or printed publications.[9]
Still, the Federal Circuit “recognize[d] that there are instances in which a petition may rely in part on AAPA, such as to indicate the general knowledge of a person of ordinary skill in the art.”[10] And in the end, the Federal Circuit’s holding that the basis-at-issue was improperly founded on AAPA rested solely on the fact that Petitioner “did expressly state that AAPA is included in the basis of Ground 2.”[11] The Court did “not consider whether, in substance, Ground 2 included AAPA in its basis” and “expect[s] that future cases may require the PTO and this court to consider the substance of a petition to determine compliance with § 311(b).”[12]
Key Takeaways
There are three major takeaways for PTAB practitioners from the 2025 Memorandum and the Federal Circuit’s holding in Qualcomm.
- It is improper to explicitly state that the basis of a challenge to a claim includes AAPA, expert testimony, and/or evidence of general knowledge or ordinary skill.
- Following the USPTO guidance and Circuit precedent, it appears that AAPA, expert testimony, and evidence of general knowledge or ordinary skill may still be used (1) to demonstrate the knowledge of the ordinarily-skilled artisan at the time of the invention and (2) to support a motivation to combine specific references.
- The USPTO and Federal Circuit will likely continue to grapple with the issue of when AAPA, expert testimony, and evidence of general knowledge or ordinary skill constitutes part of a “basis” of a challenge as opposed to an allowable use, as there is still no substantive framework for determining whether AAPA and like-evidence have been improperly incorporated into the basis of a challenge.
[1] See generally USPTO Memorandum issued July 31, 2025 titled, “Enforcement and Non-Waiver of 37 C.F.R. § 42.104(b)(4) and Permissible Uses of General Knowledge in Inter Partes Reviews” (2025 Memorandum).
[2] Id. at 3.
[3] Id. at 1 (emphasis added).
[4] Id.
[5] Id. at 3.
[6] See USPTO Memorandum issued August 18, 2020 titled, “Treatment of Statements of the Applicant in the Challenged Patent in Inter Partes Reviews Under § 311” (2020 Memorandum) at 4; USPTO Memorandum issued June 9, 2022 titled, “Treatment of Statements of the Applicant in the Challenged Patent in Inter Partes Reviews Under § 311” (2022 Memorandum) at 2.
[7] 2020 Memorandum at 8-9; 2022 Memorandum at 4.
[8] 2020 Memorandum at 6; 2022 Memorandum at 4-5.
[9] Qualcomm Inc. v. Apple Inc., 134 F.4th 1355, 1365 (Fed. Cir. 2025) (emphasis added).
[10] Id. (citing Koninklijke Philips v. Google, 948 F.3d 1330, 1339 (Fed. Cir. 2020)).
[11] Id. at 1366.
[12] Id. at 1368.
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