A Published Patent Application Is IPR Prior Art as of Its Filing Date

Written by: Brianne M. Kingery and Daniel P. Hughes

LYNK LABS, INC. v. SAMSUNG ELECTRONICS CO., LTD.

Before Lourie, Prost, and Stark

Summary: In an IPR, a patent application is considered a “printed publication” as of the application’s filing date, not its publication date.

Samsung filed a petition for IPR of a Lynk Labs patent, challenging various claims as obvious.  Several of Samsung’s asserted grounds of unpatentability relied on a patent application which was filed before, but published after, Lynk Labs’ priority date.  Lynk Labs argued that an IPR can only be instituted based on prior art “printed publications,” and that the reference was not a “printed publication” in the prior-art period because it published afterward.  The Patent Trial and Appeal Board found the challenged claims unpatentable for obviousness based on the published patent application reference.  Lynk Labs appealed.

The Federal Circuit affirmed.  The court noted the parties agreed the published patent application reference was a printed publication and was thus a type of reference that can be used as the basis of an IPR challenge under 35 U.S.C. § 311(b).  The Federal Circuit further noted that, under 35 U.S.C. § 102(e)(1), a published patent application is deemed prior art as of its filing date.  The court held that reading these two provisions together, in an IPR, a published patent application can be deemed a printed publication as of its filing date.

Editor: Sean Murray