"United States Patent and Trademark Office (USPTO) will enforce and no longer waive
the requirement of 3 7 C.F.R. § 42.104(b)(4)(Rule 104(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.
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 the USPTO memo for details. Another favorable policy change for patent owners.
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