On July 31, United States Patent and Trademark Office (USPTO) Acting Director Coke Morgan Stewart issued a memo restricting reliance on applicant-admitted prior art and “general knowledge” in inter partes reviews (IPR). The memo said that USPTO would enforce Rule 104(b) which states that an IPR petition “must specify where each element of the claim is found in the prior art patents or printed publications relied upon”.
Whereas previous USPTO directors Andrei Iancu and Kathi Vidal both issued policy memos emphasizing that Rule 104(b) was procedural and should not narrow the scope of IPR petitions beyond the statute, Stewart has taken a different approach, Bracewell’s Kit Crumbley, a former administrative patent judge at the PTAB, explained to IAM.
“There is little ambiguity in the Federal Circuit’s statement, and the USPTO had previously argued in court for this position,” says Crumbley. “But Acting Director Stewart’s memo states that rather than attempt to navigate these limited uses and risk further litigation on this point in the Federal Circuit, the USPTO will instead prohibit some uses of ‘general knowledge’ entirely.”
