USPTO Tightens Limits on AAPA Use in IPRs Following Qualcomm Precedent

A recent memo from the acting director of the US Patent and Trademark Office directs the Patent Trial and Appeal Board (PTAB) to reject inter partes review (IPR) petitions that use “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’) … to supply a missing claim limitation.”

The aim of the memo, dated July 31, 2025, was to bring the PTAB in line with the US Court of Appeals for the Federal Circuit precedent set in Qualcomm Inc. v. Apple Inc., 24 F.4th 1367, 1373-77 (Fed. Cir. 2022) (Qualcomm I) and Qualcomm Inc. v. Apple Inc., 134 F.4th 1355, 1364-65 (Fed. Cir. 2025) (Qualcom II). In those cases, the court held it was improper to use AAPA as part of an invalidating prior art combination under 35 USC § 311(b). The court found that “because AAPA is not a prior art patent or printed publication (per Qualcomm I), it follows that the plain meaning of § 311(b) does not permit the basis to include AAPA.” Qualcomm II at 1365.

In these cases, the court reversed the PTAB’s finding that the challenged claims were unpatentable as obvious, on the grounds that the decision improperly relied on AAPA in combination with other prior art. The court additionally noted that because the petitioner had “opened with a table that prominently labeled the ‘Basis’ of Ground 2 as ‘AAPA in view of [prior art patent]” that the AAPA was clearly being used as a basis to supply a missing claim limitation, rather than the allowed usage of referencing it as the “general knowledge of a person of ordinary skill in the art.” Qualcomm II at 1366, 1365.

However, the scope of Qualcomm was later addressed in Shockwave Med. Inc. v. Cardiovascular Sys. Inc., 142 F.4th 1371 (Fed. Cir. 2025), where the Federal Circuit held that AAPA could be treated as “general background knowledge” and used to satisfy certain claim limitations. The petitioner had argued that “[i]t would have been obvious for the POSITA [person having ordinary skill in the art] to have implemented and utilized the most common angioplasty catheter and balloon design, with predictable and expected results.” Id. at 1379.

Despite the PTAB’s final decision including “AAPA” in its obviousness combination table under the Basis column, the court maintained that the petitioner, and not the board, defines the grounds, and thus the phrasing in the petition was more determinative than the board’s table. Some critics viewed this as an unnecessary focus on labeling over substance.

The acting director’s memo clarifies the US Patent and Trademark Office’s position by reinforcing 37 CFR § 42.104(b)(4), signaling a more restrictive approach than that suggested by the Federal Circuit’s decision in Shockwave. While not expressly rejecting Shockwave, the policy prioritizes procedural consistency by requiring petitioners to map each claim element to patents or printed publications, rather than general knowledge.

The memo reiterates that “[g]eneral knowledge may still be used in an IPR to support a motivation to combine or to demonstrate the knowledge of a person having ordinary skill in the art,” as was also held in Qualcomm. However, the line between using such knowledge to demonstrate a POSITA’s skill versus improperly using it to supply a missing claim limitation remains unclear. The memo also emphasizes that petitioners must procedurally “identify in the petition where each claim element is found in the prior art patents or printed publications relied upon.”

While uncertainty remains as to how this policy will be implemented for IPR petitions filed on or after September 1, 2025, one thing is certain: petitions should avoid listing AAPA as a “Basis” anywhere in the petition.