Admissions made by the patentee, either in the patent specification or during the course of prosecution, identifying a particular work as ‘‘prior art’’ can be relied upon for both anticipation and obviousness determinations. Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354, 66 U.S.P.Q.2d 1331 (Fed. Cir. 2003); Constant v. Advanced Micro-Devices Inc., 848 F.2d 1560, 1570, 7 U.S.P.Q.2d 1057 (Fed. Cir. 1988); see also Reading & Bates Construction Co. v. Baker Energy Resources Corp., 748 F.2d 645, 650, 223 U.S.P.Q. 1168 (Fed. Cir. 1984). However, whether such Applicant Admitted Prior Art (AAPA) can also be used as ‘‘prior art’’ in an inter partes review (IPR) is unclear because 35 U.S.C. § 311(b) states that a ‘‘petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent . . . only on the basis of prior art consisting of patents or printed publications.’’ (emphasis added).

Originally published in Bloomberg BNA’s Patent, Trademark & Copyright Journal® - August 4, 2017.