The acting director of the United States Patent and Trademark Office (USPTO) has issued a memorandum to the Patent Trial and Appeal Board (PTAB or Board) stating that as of September 1, 2025, every petition for inter partes review (IPR) must specify where each element of a claim at issue is found in a prior art patent or printed publication.
Under 35 U.S.C. § 312(a)(3), an IPR petition must identify, “in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.”
Under 37 C.F.R. § 42.104(b)(4), the IPR petition also “must specify where each element of the claim is found in the prior art patents or printed publications relied upon.”
The memo states that the USPTO will enforce and no longer waive these requirements.
This new memo clarifies that IPR petitioners can no longer rely on “general knowledge” in an art, such as expert testimony, applicant-admitted prior art (AAPA), common sense, or any other evidence (collectively, “general knowledge”) that isn’t in a patent or printed publication to supply a missing claim limitation that isn’t otherwise disclosed in a prior art patent or printed publication.
However, general 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.
This new memo supersedes 2020 and 2022 memos on the subject.
According to the memo, this
is consistent with the Director’s broad discretion to prescribe regulations to ensure the “integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings.”
Also, “past efforts by the Office to permit limited use of general knowledge to satisfy a missing claim limitation are no longer consistent with Federal Circuit precedent, such as the case of Qualcomm Inc. v Apple Inc., 24 F.4th 1367, (Fed. Cir. 2022).
In Qualcomm, the Federal Circuit held that AAPA does not form the “basis” of a ground in an IPR petition, but may be used as evidence of the background knowledge of a person having ordinary skill in the art.
In 2025, the Federal Circuit held in another Qualcomm/Apple decision that the basis for a petition may not include AAPA in combination with prior art patents and printed publications.
Also in 2025, as we recently blogged about, the Federal Circuit in Shockwave Med., Inc. v. Cardiovascular Sys., Inc., clarified that AAPA evidences general knowledge in the relevant art and that general knowledge can be used to supply a missing claim limitation. This new memorandum supersedes the Shockwave decision.
According to the memorandum, strict enforcement of Rule 104(b)(4)
will provide a clear means for (i) identifying the petitioner’s legal and factual basis for satisfying the threshold for instituting IPR, and (ii) providing the patent owner with notice as to the basis for the challenge to the claims.
Also, according to the acting director,
enforcing Rule 104(b)(4) is the best course of action to provide certainty to the parties, the Board, and the public, and to allow for the efficient administration of the Office
As the National Law Review explains,
The USPTO’s memorandum has significant implications for both petitioners and patent owners alike. Petitioners will want to rely on the express disclosures in the prior art patents or printed publications to teach each and every claim limitation of the challenged patent, instead of using AAPA, expert testimony, common sense, or other evidence to supply a missing claim limitation. Conversely, patent owners may want to carefully scrutinize petitions for reliance on general knowledge beyond motivation to combine and the knowledge of a person of ordinary skill in the art (POSITA).
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