On January 14, in Lynk Labs, Inc. v. Samsung Electronics Co., Ltd., the Federal Circuit held that a published patent application can be prior art in an inter partes review (IPR) based on the application’s filing date, not the publication date.
The patent at issue, U.S. Patent No. 10,687,400, related generally to alternating current (AC) driven light emitting diodes (LEDs), LED drivers, and AC drive circuits and methods. Samsung Electronics filed a petition for IPR of the ’400 patent challenging the patentability of the claims for obviousness under 35 U.S.C § 103. Samsung Electronics’ argument relied, in part, on U.S. Patent Publication No. 2004/0206970 (Martin).
Martin’s filing date was before the ’400 patent’s priority date, but Martin published after the ’400 patent’s priority date. Lynk Labs argued that Martin should not be considered prior art to the ’400 patent because it was published (and thus became publicly accessible) only after the priority date of the ’400 patent. Stated differently, “because Martin became publicly accessible only as of its October 21, 2004 publication date, and because the ’400 patent’s priority date is February 25, 2004, Martin cannot be a ‘prior art . . . printed publication[]’ under § 311(b) as to the ’400 patent.’”
Under 35 U.S.C. § 311(b), an IPR may only challenge a patent on grounds of prior art consisting of patents or printed publications as defined under sections 102 or 103.
Lynk Labs pointed towards a line of cases relating to books, articles, or the like which analyzed section 102(a) or (b). Instead, the Federal Circuit cited section 102(e)(1) as applicable in this instance as it relates to published patent applications. Section 102(e) states that an invention described in a patent application filed in the United States before another’s invention can be considered prior art.
Lynk Labs and Samsung Electronics both agreed that Martin was a “printed publication,” and “§311(b) permits IPR unpatentability challenges ‘on the basis of prior art consisting of patents or printed publications.’” Under section 102(e)(1), published applications are deemed prior art as of their filing date. “[B]ecause a published patent application is a ‘printed publication,’ § 102(e)(1) treats this type of printed publication as prior art as of a time before it became publicly accessible—i.e., as of its filing date.”
The Federal Circuit stated, “the plain language of §§ 311(b) and 102(e)(1) permits IPR challenges based upon published patent applications, and such published patent applications can be deemed prior art in IPRs as of their filing date,” and found Martin to be prior art to the ’400 patent due to Martin’s filing date being earlier than the ’400 patent’s priority date. Having found Martin was prior art to the ’400 patent, the Federal Circuit affirmed the decision of the Patent Trial and Appeal Board finding the claims of the ’400 unpatentable in view of U.S. Patent No. 6,411,045 (Nerone) and Martin.
In evaluating what constitutes prior art in the context of an IPR challenge, a patent application will be treated as prior art if it was filed before the invention’s priority date, regardless of when it was published.
For more information on this ruling, please contact Fitch Even associate Prestin Van Mieghem, author of this alert.
Fitch Even IP Alert®
Prestin Van Mieghem
Prestin Van Mieghem’s intellectual property law practice includes patent preparation and prosecution, freedom-to-operate, infringement analysis, and global portfolio prosecution. In addition, he drafts and reviews a variety of business contracts and intellectual property agreements, including product distribution agreements, licensing agreements, and joint development agreements.
