SCOTUS Denial of Lynk Labs Petition Preserves Unpublished Patent Applications as Prior Art in Pre-AIA IPRs

Today, the U.S. Supreme Court denied a petition for writ of certiorari filed by LED lighting developer Lynk Labs to challenge the U.S. Court of Appeals for the Federal Circuit’s ruling last January upholding the invalidation of Lynk Labs’ patent claims. The Supreme Court’s denial leaves in place the Federal Circuit’s determination that U.S. patent applications are prior art as of their filing date in inter partes review (IPR) validity proceedings conducted under the pre-America Invents Act (AIA) statute.

Lynk Labs filed its petition for writ last September, arguing that under a century of case law interpreting conditions for novelty under 35 U.S.C. § 102 before passage of the AIA, which established IPR proceedings, printed publications must be published prior to the date of invention to qualify as invalidating prior art. Lynk Labs said the Federal Circuit engaged in a nonsensical Catch-22 by considering the asserted prior art as a printed publication admissible as prior art in IPR proceedings under 35 U.S.C. § 311(b) while analyzing the effective date of that prior art under the temporal requirements for patent applications as prior art governed by pre-AIA Section 102, which stems from the date of filing and not the date of publication.

Samsung: Alternative Approach Leads to Priority Dates Changing During IPR

On February 2, Samsung filed its brief in opposition to Lynk Labs’ petition for writ, urging the Supreme Court to deny cert because the Federal Circuit’s ruling reflected the most natural reading of the statute under a plain text analysis. Samsung argued that Lynk Labs’ interpretation could lead to the farfetched result of priority dates changing if a patent application asserted as prior art issues as a patent during the IPR proceeding. Samsung added that the U.S. Patent and Trademark Office (USPTO) has long used a patent application’s filing date to determine when it qualifies as prior art for inter partes reexamination proceedings without lawmakers in the U.S. Congress taking issue.

Arguing that review by the Court was unwarranted, Samsung noted that Lynk Labs’ question presented arises under a statutory scheme superseded by the AIA, urging the Court to wait for a cert petition that raises a similar question presented on the interpretation of post-AIA Section 102. Only 32% of IPRs in 2025 applied the pre-AIA statute, and that number will keep decreasing until it reaches 0% in 2033 when patents issued before the effective date of the AIA will no longer be in force.

Solicitor General: Special Timing Rule Applies for Prior Art Patent Applications

On the same day Samsung’s brief was filed, the U.S. Solicitor General filed a brief for the federal respondent also in opposition of Lynk Labs’ petition. According to the Solicitor General, Lynk Labs’ arguments are foreclosed by the special timing rule in pre-AIA Section 102(e)(1), which establishes that patent applications are prior art to patents issuing from subsequently filed patent applications. Lynk Labs’ disputes the Federal Circuit qualifying a patent application as a printed publication admissible in IPRs under Section 311(b), but the Solicitor General notes that the cert petition raises no challenge to the applicability of pre-AIA Section 102(e)(1) in IPR proceedings.

Responding to arguments raised in amicus briefing, the Solicitor General agreed that the scope of invalidating prior art that can be considered in IPRs is narrower than in U.S. district court. However, the patent application asserted as prior art by Samsung is the kind of printed material that Congress intended to be analyzed by the PTAB under the AIA, leaving evidence relevant to the on-sale bar and other novelty considerations better suited for fact-finding discovery available in U.S. district courts. The Solicitor General also distinguished the Federal Circuit’s 2022 ruling in Qualcomm v. Apple, which involved applicant admitted prior art not requiring prior art determinations by any court.

Lynk Labs: Qualcomm Forecloses Mix-and-Match Statutory Approach to Prior Art Determinations

In a reply brief filed February 17, Lynk Labs contended that neither Samsung nor the Solicitor General adequately acknowledged the Supreme Court’s 2019 ruling in Helsinn Healthcare v. Teva Pharmaceuticals. Though that case was about the application of Section 102’s on-sale bar, Lynk Labs said it established that the Court “presume[s] that when Congress reenacted the same language in the AIA, it adopted the earlier judicial construction of that phrase.” Instead of reviewing the long judicial history construing “printed publication” to require public accessibility, the Federal Circuit improperly deferred to the agency, a point raised by other amici pointing out the application of the Supreme Court’s 2024 ruling in Loper Bright Enterprises v. Raimondo.

Challenging the Solicitor General, Lynk Labs noted its dispute went precisely to the point whether the special timing rules of Section 102(e)(1) applied to the scope of prior art allowable in IPRs under Section 311(b). Pointing again to Qualcomm, Lynk Labs argued that the Federal Circuit in that case rejected the kind of mix-and-match statutory approach to Section 311(b) prior art determinations offered by Samsung. Lynk Labs disputed that Congress had awareness of the USPTO’s practice regarding the priority dates of patent applications and cited the amicus brief filed by AIA co-founder Congressman Lamar Smith who, along with former USPTO Director David Kappos and former Federal Circuit Chief Judge Paul Michel, warned that the Federal Circuit’s expansion to Section 311(b) “threatens to collapse the careful balance and legislative compromise reflected in the AIA’s final text that affirmatively restricted the scope of IPRs.”