Holding: A published patent application is prior art in an IPR proceeding as of the application’s filing date. Therefore, a reference may be prior art for the purposes of an IPR even if it was published after the priority date of the patent being reviewed.
Lynk Labs appeals a final written decision from the PTAB in an IPR finding claims 7-13 and 15-17 of its US Patent No. 10,687,400 to be unpatentable. The ‘400 Patent is directed to alternating current driven LEDs and LED circuits and the claims recite lighting systems with various LED circuit configurations. The ‘400 Patent has a priority date of February 25, 2004. In its IPR petition, Samsung alleged that the ‘400 Patent was obvious in view of US Patent Publication No. 2004/0206970 to Martin in addition to other references. The ‘970 Application was filed on April 16, 2003, approximately 10 months before the priority date of the ‘400 Patent. However, the ’970 Application was not published until October 21, 2004, approximately 8 months after the priority date of the ‘400 Patent. The ‘970 Application was abandoned and did not issue as a patent.
Lynk alleged that the ‘970 Application cannot be used as prior art to the ‘400 Patent in an IPR proceeding since the ‘970 Application was not published as of the priority date of the ‘400 Patent. Section 311(b) states that an IPR petitioner may challenge a patent “only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” 35 U.S.C. §311(b). Although Lynk conceded that the ‘970 Application is a printed publication under Section 311(b), it argued that the ‘970 Application is not a prior art printed publication, citing cases that analyzed prior art status under pre-AIA Section 102(a) or (b). Both Section 102(a) and (b) require that a reference be publicly available before the date the critical date recited in the statute.
However, the Federal Circuit looked to pre-AIA Section 102(e), which states that 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[.]” 35 U.S.C. §102(e)(pre-AIA). Therefore, according to Section 102(e), even if a patent application was published after the priority date of a claimed invention, the application is still prior art, as long as the application was filed before the priority date of the invention. Section 102(e) effectively treats a published patent application as prior art as of its filing date, rather than relying on the date that the application became publicly available through publication.
Based on its analysis of pre-AIA Section 102(e), the Federal Circuit upheld the finding of the PTAB. A published patent application is a “printed publication,” and thus falls within the type of prior art references that may be used in an IPR under Section 311. Additionally, according to pre-AIA Section 102(e)(1), published patent applications are considered to be prior art as of its filing date. Therefore, the language of Section 311 and pre-AIA Section 102(e)(1) permits IPR challenges based on published patent applications, even if the application was published after the priority date of the patent in question, as long as the patent application was filed before the priority date.
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