On January 14, 2025, the Court of Appeals for the Federal Circuit in Lynk Labs, Inc. v. Samsung Electronics Co., Ltd., No. 2023-2346 (Fed. Cir.), affirmed the Patent Trial and Appeal Board’s ruling that “a published patent application can be deemed prior art in an IPR as of the application’s filing date.” Op. 2. In so doing, the Court provided clarity as to when a published patent application became effective as prior art for purposes of IPR proceedings. The parties (and the Court) agreed that the published patent application was a printed publication, but the Patent Owner argued that the prior art date should be the application’s publication date (which was not early enough to be prior art), while the petitioner advocated that it should be the application’s filing date. The Court held the effective prior art date to be the filing date of the published patent application.
The Court explained that in pre-AIA § 102(e)(1), “Congress created … a special rule for published patent applications” whereby a published patent application “serves as prior art to a claimed invention if the application was ‘filed … before the [claimed] invention.’” Id. at 8. “In other words, under § 102(e)(1), even if a patent application was published after a claimed invention, it may serve as prior art to the invention if the application was filed before the invention.” Id. “[B]ecause a published patent application is a ‘printed publication,’” the Court held that “§§ 311(b) and 102(e)(1) permit IPR challenges based upon published patent applications, and such published patent applications can be deemed prior art in IPRs as of their filing date.” Id. at 9-10, 20.
In this decision on the effective prior art date of a printed patent application, the Court has provided certainty on an area of law by confirming for patent owners and patent challengers alike the scope of prior art available in IPRs. Although the decision interpreted the pre- America Invents Act (“AIA”) prior art statutes, the Court’s opinion will likely also apply in IPRs involving the AIA prior art statutes, given the similarity of pre-AIA § 102(e) to AIA § 102(a)(2). Compare pre-AIA 35 U.S.C. § 102(e)(1) (“A person shall be entitled to a patent unless … the invention was described in … an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent”), with 35 U.S.C. § 102(a)(2) (“A person shall be entitled to a patent unless … the claimed invention was described … in an application for patent published or deemed published under section 122(b), in which the … application … names another inventor and was effectively filed before the effective filing date of the claimed invention.”).
Moving forward, parties should expect that petitioners in IPR proceedings will be able to rely on the filing date for patents and published patent applications to establish that they are prior art in IPRs. In other words, petitioners will be able to rely on later-published patent applications with effective filing dates before the effective filing date of a challenged patent. This is likely to be true regardless of whether the Patent Trial and Appeal Board applies pre-AIA § 102 or AIA § 102 in a given IPR proceeding.
WilmerHale represented amicus curiae Intel Corporation in the appeal.
