the USPTO issued a memorandum explaining that the Office will enforce and no longer waive the requirement of 37 C.F.R. § 42.104(b)(4) that an IPR petition “must specify where each element of the claim is found in the prior art patents or printed publications relied upon.”

To comply with Rule 104(b)(4), an IPR petitioner may not use applicant admitted prior art, expert testimony, common sense, and other evidence (collectively, general knowledge) that is not “prior art consisting of patents or printed publications” to supply a missing claim limitation. An IPR petitioner may still use general knowledge to support a motivation to combine or to demonstrate the knowledge of a person having ordinary skill in the art.    

The approach set forth in this memorandum provides a clear means for (i) identifying the petitioner’s legal and factual basis for satisfying the threshold for instituting an IPR and (ii) providing the patent owner with notice as to the basis for the challenge to the claims. The memorandum applies to all petitions for IPR filed on or after September 1, 2025.

Here is the text of the MEMORANDUM, which is available on uspto.gov here Learn more :

The United States Patent and Trademark Office (USPTO) will enforce and no longer waive the requirement of 37 C.F.R. § 42.104(b)(4) (Rule I 04(b)(4)) that a petition for inter partes review (IPR) “must specify where each element of the claim is found in the prior art patents or printed publications relied upon.” 1 As a practical matter, enforcement of Rule 104(b)(4) means that applicant admitted prior art (AAPA), expert testimony, common sense, and other evidence that is not “prior art consisting of patents or printed publications” (collectively, “general knowledge”) may not be used to supply a missing claim limitation. Per 35 U.S.C. § 312(a)(4), the Board shall deny an IPR petition that fails to comply with Rule 104(b)(4). 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. See, e.g., Unification Techs. LLC ,~ Micron Tech. Inc., 2024 WL 3738401, at *7 (Fed. Cir. Aug. 9, 2024) (affirming use of general knowledge in an IPR proceeding in the form of expert testimony and AAPA to demonstrate how a skilled artisan would have understood a prior art reference’s disclosure as teaching a claim limitation).

This Memorandum supersedes the 2020 Memorandum and the 2022 Memorandum- both
of which are no longer consistent with Federal Circuit precedent concerning the use of AAPA to supply a missing claim limitation. See Qualcomm Inc.,~ Apple Inc., 24 F.4th 1367, 1373-77 (Fed. Cir. 2022) (vacating and remanding to determine whether AAPA improperly formed the “basis” of petitioner’s patentability challenge); Qualcomm Inc. v. Apple Inc., 134 F.4th 1355, 1364-65 (Fed. Cir. 2025) (rejecting USPTO’s “in combination” rule that requires the Board to consider AAPA whenever an IPR petition combines AAPA with prior art patents or printed publications because “it cannot be that AAPA never forms the basis of a ground under § 311 (b) whenever AAPA is
combined with prior art patents or printed publications.”).

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.” 35 U.S.C. § 312(a)(4) further requires that a “petition filed under section 311 may be considered only if … the petition provides such other information as the Director may require by regulation.” Rule 104(b)(4), promulgated in 2012, instructs petitioners on what information is required in a petition, namely that an IPR petition “must specify where each element of the claim is found in the prior art patents or printed publications relied upon.” 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.” 35 U.S.C. § 316(b). As noted above, 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. See Qualcomm, 24 F.4th at 1373-77; Qualcomm, 134 F.4th at 1364-65. Rather than attempt to navigate these 2 limited uses and risk further litigation on this point in the Federal Circuit, enforcement of Rule 104(b)(4) as provided in this Memorandum 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. While Rule 104(b)(4), as applied in some cases, may be narrower than 35 U.S.C. § 31 l(b), 2 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. See 35 U.S.C. §§ 312(a)(4), 316(b). Further, although Rule 104(b)(4) does not address what can serve as the “basis” of an IPR under § 311 (b) (see 2020 Memorandum at 8- 9 & n. 5; 2022 Memorandum at 5- 6 & n.2), the rule does impose on petitioners a procedural requirement to identify in the petition where each claim element is found in the prior art patents or printed publications relied upon.

This Memorandum will apply to any petition for IPR filed on or after September 1, 2025

1 The August 18 , 2020 Memorandum entitled “Treatment of Statements of the Applicant in the Challenged Patent in Inter Partes Reviews Under§ 311” (2020 Memorandum), and the June 9, 2022 Memorandum entitled “Updated Guidance on the Treatment of Statements of the Applicant in the Challenged Patent in Inter Partes Reviews Under § 311” (2022 Memorandum) both indicated that the Board was waiving enforcement of Rule 104(b)(4). See 2020 Memorandum at 8-9; 2022 Memorandum at 6. In particular, as indicated in both the 2020 Memorandum and the 2022 Memorandum, the USPTO has discretion to waive, suspend, relax, or modify its procedural rules. Id.; see Am. Farm Lines,~ Black Ball Freight Serv., 397 U.S. 532, 539 (1970) (“it is always within the discretion of a court or an administrative agency to relax or modify its procedural rules adopted for the orderly transaction of business before it”); see also 37 C.F.R. § 42.S(b) (stating that “[t]he Board may waive or suspend a requirement of parts 1, 41, and 42”).