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June 23, 2021 | By Gene M. Garner II
Posted in: S&H IP Blog | U.S. Court of Appeals For The Federal Circuit


By: Gene M. Garner II, Partner

On May 4, 2021, oral arguments were heard by the Court of Appeals for the Federal Circuit (“CAFC”) relating to whether the Patent Trial and Appeal Board (“the Board”) of the United States Patent and Trademark Office (“USPTO”) could use statements made in an issued patent which is the subject of an inter partes review (“IPR”) in which a request was made to cancel as unpatentable one or more claims.


At issue during the oral arguments was whether it is permissible to use such statements in the issued patent in the IPR in combination with a prior art reference as a “basis of prior art consisting of patents or printed publications” within the meaning of 35 U.S.C. 311 (Inter partes review) to cancel claims in the issued patent:

(b) SCOPE.—A petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.

Also at issue was whether the CAFC should decide to what extent it is permissible to use such statements in the issued patent as a basis for unpatentability during an IPR then remand to the USPTO for reconsideration based on the CAFC’s decision or whether the CAFC should remand to the USPTO for reconsideration based upon now-updated guidance that the USPTO has established internally without issuing a decision.


Arguments were presented that 35 USC 311(b) limits the Board to considering only prior art patents or printed publications during an IPR and that statements made in the issued patent could only be used in limited supporting roles to assist in understanding the meaning of the prior art patents or publications. That is, it would be impermissible to use such statements to supply limitations not found in prior art patents or publications since such statements themselves were not included in a prior art patent or publication.

Counter arguments were presented that it is permissible to use such statements included in the issued patent to supply limitations acknowledged as known in the art since such statements are admissions which are inherently reliable and knowledge of skilled artisans is relevant and are readily available to the Board. Further arguments were presented that such statements in the issued patent are unlike other types of prior art identified in 35 USC 102(a), such as public use or on sale, which are not included as a basis for an IPR in 35 USC 311(b) since such public use or on sale issues would be difficult for the USPTO to investigate.


Care should be exercised to avoid making statements in a patent application, including the background section, which could be used to challenge the validity or scope of claims in a subsequently-issued patent.


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