On July 31st, the Patent Trial and Appeal Board ("PTAB") issued a three-page memorandum stating that it will “enforce and no longer waive the requirement of 37 C.F.R. § 42.104(b)(4).” That Rule states that any petition for Inter Partes Review ("IPR") “must specify where each element of the claim is found in the prior art patents or printed publications relied upon.” The PTAB's memorandum explains that “[a]s a practical matter, enforcement of Rule 104(b)(4) means that applicant admitted prior art (AAPA), expert testimony, common sense, and other evidence that is not ‘prior art consisting of patents or printed publications’ (collectively, ‘general knowledge’) may not be used to supply a missing claim limitation.”
The July 31 memorandum breaks with two previous PTAB memoranda (issued in 2020 and 2022), both of which had indicated that the PTAB was waiving enforcement of Rule 104(b)(4).
The newly issued memorandum will apply to all petitions for IPR filed after September 1, 2025. Parties intending to file petitions after September 1st therefore need to ensure compliance with this new procedural requirement to identify in the petition where each claim element is found in the prior art patents or printed publications relied upon. Patent owners opposing petitions after September 1st should likewise ensure that their adversaries are in compliance and would be well-advised to challenge any petition that relies only on “expert testimony,” “common sense,” or other “general knowledge” to supply a missing claim element.
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