USPTO Director Andrei Iancu recently issued a memorandum to the PTAB titled “Treatment of Statements of the Applicant in the Challenged Patent in Inter Partes Review under § 311.” Relying on Section 311, the memorandum permits the use of Applicant Statements in IPRs, but not as a substitute for prior art patents and printed publications. Thus, Applicant Statements alone are not sufficient to form a basis for IPR institution. Rather, Applicant Statements can be used as evidence of the general knowledge in the art, as long as used in conjunction with prior art.
As explained in the conclusion of the memorandum:
In summary, the basis of an IPR must be one or more prior art patents or printed publications. Statements in the specification of the patent being challenged are not prior art patents or printed publications, and thus cannot form the basis of an IPR. Nevertheless, the Board can also rely on the general knowledge of a person with ordinary skill in the art in assessing the patentability of the patent claims at issue. Statements made in the specification of the patent that is being challenged in an IPR can be used as evidence of such general knowledge, and thus, provided the basis of the IPR is one or more prior art patents or printed publications, can be used to (1) supply missing claim limitations that were generally known in the art prior to the invention (for pre-AIA patents) or the effective filing date of the claimed invention (for post-AIA patents); (2) support a motivation to combine particular disclosures; or (3) demonstrate the knowledge of the ordinarily-skilled artisan at the time of the invention (for pre-AIA patents) or the effective filing date of the claimed invention (for post-AIA patents) for any other purpose related to patentability.
Thus, the use of Applicant Statements in IPRs is more limited than the permitted use in examination under MPEP §2129, Admissions as Prior Art. Examination is not subject to Section 311.