Lynk Labs’ SCOTUS Petition Challenges CAFC’s Bifurcated Approach to U.S. Patent Applications as IPR Prior Art

Last week, a petition for writ of certiorari filed by Lynk Labs was docketed at the U.S. Supreme Court challenging rulings at the U.S. Patent and Trademark Office (USPTO) and the U.S. Court of Appeals for the Federal Circuit (CAFC) regarding the scope of invalidating prior art that can be asserted in inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB). Lynk Labs argues that the patent application supplying part of the PTAB’s obviousness determination was improperly treated as a printed publication despite remaining unpublished until after the critical date of Lynk Labs’ challenged patent claims.

This January, the Federal Circuit affirmed the PTAB’s obviousness ruling in a precedential decision, dismissing Lynk Labs’ argument that a U.S. patent application disclosing an alternating current light emitting device (“Martin”) could not qualify as a prior art printed publication because it was only published after the critical date of Lynk Labs’ challenged patent. Assessing pre-American Invents Act (AIA) conditions for novelty codified at 35 U.S.C. § 102, including Section 102(e)(1)’s provision that U.S. patent applications are prior art if filed before another’s date of invention, the Federal Circuit found that U.S. patent applications were included within the scope of Section 102(b) prior art printed publications.

CAFC Cannot Use Statutory Catch-22 to Remove Temporal Requirement from Prior Art

Lynk Labs’ petition for writ contends that the Federal Circuit improperly interpreted separate provisions within Section 102 to find that Martin qualified as prior art. Lynk Labs argued that for more than a century prior to the enactment of the AIA, which established IPR proceedings at the PTAB, courts have found that asserted prior art does not qualify as a “printed publication” under the statute unless that prior art was published prior to the date of invention for the challenged patent.

Since 1980, when Congress passed a law creating ex parte reexamination proceedings at the USPTO, the Legislative Branch has created new administrative proceedings for validity challenges at the Office. In each of those legislative changes, including the AIA and the American Inventors Protection Act of 1999 that established inter partes reexamination, Lynk Labs notes that the statutory provisions on prior art “printed publications,” including the scope of invalidating prior art for IPRs codified at 35 U.S.C. § 311(b), were not amended to include U.S. patent applications. Unlike in Helsinn Healthcare v. Teva Pharmaceuticals (2018), where the U.S. Supreme Court interpreted Section 102’s on-sale bar in accordance with pre-AIA precedent, the Federal Circuit treated “printed publications” as temporally agnostic in defiance of the term’s settled understanding in Lynk Labs’ case.

Lynk Labs’ petition called the CAFC’s interpretive methodology “unprecedented,” leading to a nonsensical Catch-22. “Martin cannot be a printed publication for purposes of half the key clause (discerning the categories of art that may be considered), but a patent application for the other half (for determining whether it is prior or subsequent art),” Lynk Labs argues. “Either way, the Federal Circuit got it wrong,” the petition reads, because Martin was not public before the critical date as a printed publication, nor are U.S. patent applications subject to special rules eliminating publication requirements for prior art.

SCOTUS Review Required to Retain Statutory Limits on Scope of Invalidating Prior Art

The CAFC’s decision below engages in “statutory gymnastics” violating the cardinal rule that statutes should not be construed to render any word insignificant or void, Lynk Labs argues. “If a printed publication is any document published at any time, as the Federal Circuit held below, there would have been no reason for Congress to list patents as a separate category” in Section 311(b). The AIA’s inclusion of public sales and uses as invalidating prior art in covered business method (CBM) reviews underscores the significance of Congress’ choice not to expand the scope of IPR prior art to include U.S. patent applications when enacting the AIA.

Neither Congressional purpose nor longstanding administrative practice can justify the CAFC’s contorted approach to Section 311(b), Lynk Labs argues. Not only do U.S. patent applications remain a controversial form of prior art, which Congress allows for validity challenges in U.S. district courts observing higher burdens of proof, but federal courts also owe no deference to the Manual for Patent Examining Practice (MPEP) cited by Samsung and other respondents in appellate briefing.

The decision below requires Court review as it could cause havoc by allowing courts to consider any form of prior art, including sales and public uses, to qualify as a prior art “printed publication” forming the basis of an IPR petition so long as an invoice or other documentation was publicized before the petition was filed. The CAFC’s decision below also conflicts with its own 2022 ruling in Qualcomm v. Apple, which found limits to the scope of invalidating prior art available in IPR proceedings under Section 311(b) and rejected Apple’s bifurcated approach of asking whether the prior art is contained within a printed publication, and separately determining that the document qualifies as any type of prior art.

Citing multiple appeals regarding Section 311(b)’s scope currently pending before the Federal Circuit, Lynk Labs urged Court review to address the severe consequences resulting from the invalidation of patent rights underpinning nine- or 10-digit damages verdicts awarded in U.S. district court. While the present appeal involves a challenge to a pre-AIA patent, the statutory separateness of printed publications and U.S. patent applications in post-AIA Section 102 ensures that the issue presented by Lynk Labs’ petition will remain critical going forward, the petition contends.