Masters of Their Own Petition: The Federal Circuit’s Latest Stance on AAPA
Patent – Patently-O 2025-04-24
Summary:
by Dennis Crouch
One ongoing debate at the PTAB has been the role of Applicant Admitted Prior Art (AAPA) in inter pates review proceedings. AAPA refers to statements made by the patentee that admit that certain subject matter is part of the prior art. These statements are typically found in the background section and might include language like:
- “It is well known that …”
- “Conventional systems use …”
- “Prior work includes …”
- “As described in [reference], it is known that …”
Examiners rely heavily on AAPA, but IPR proceedings are limited to anticipation and obviousness grounds "and only on the basis of prior art consisting of patents or printed publications." In Qualcomm Inc. v. Apple Inc., 24 F.4th 1367 (Fed. Cir. 2022) ("Qualcomm I"), the Federal Circuit sided with the patentee (Qualcomm), holding that AAPA contained within the challenged patent does itself constitute such prior art. Still, the obviousness determination looks at evidence beyond the prior art, such as the level of skill in the art, and motivation to combine references. And, the court held that AAPA could be used to prove those facts.