Lynk Labs Challenges Federal Circuit's Patent Prior Art Interpretation in Supreme Court Petition
Key Insights
Lynk Labs (search) filed a Supreme Court petition challenging the Federal Circuit's ruling that allowed an unpublished U.S. patent application to serve as prior art in inter partes review proceedings.
The company argues the Federal Circuit improperly treated the Martin patent application as a "printed publication" despite it being unpublished until after the critical date of Lynk Labs (search)' challenged patent.
The petition contends this creates a legal "Catch-22" that violates century-old precedent requiring prior art to be published before the date of invention to qualify as a printed publication.
Lynk Labs (search) has petitioned the U.S. Supreme Court to review a Federal Circuit decision that broadened the scope of prior art available in inter partes review (IPR) proceedings, arguing the ruling creates dangerous precedent that could undermine patent protections across the pharmaceutical and technology sectors.
The petition, docketed last week, challenges rulings by the U.S. Patent and Trademark Office (USPTO) and the U.S. Court of Appeals for the Federal Circuit (CAFC) regarding whether unpublished U.S. patent applications can serve as invalidating prior art in IPR proceedings at the Patent Trial and Appeal Board (PTAB).
Federal Circuit's Controversial Ruling
In January, the Federal Circuit issued a precedential decision affirming the PTAB's obviousness ruling against Lynk Labs (search)' patent claims. The case centered on a U.S. patent application disclosing an alternating current light emitting device, referred to as "Martin," which was used as prior art despite being published only after the critical date of Lynk Labs' challenged patent.
The Federal Circuit found that U.S. patent applications were included within the scope of Section 102(b) prior art printed publications, 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.
Legal "Catch-22" Creates Unprecedented Interpretation
Lynk Labs (search) argues the Federal Circuit's interpretive methodology is "unprecedented," creating what the company calls 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)," the petition states.
The company contends that for more than a century prior to the AIA's enactment, courts consistently found that asserted prior art does not qualify as a "printed publication" under the statute unless published prior to the date of invention for the challenged patent.
"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.
Statutory Construction Concerns
Lynk Labs (search) argues the CAFC's decision engages in "statutory gymnastics" that violate fundamental principles of statutory construction. The company contends that if a printed publication encompasses any document published at any time, as the Federal Circuit held, "there would have been no reason for Congress to list patents as a separate category" in Section 311(b).
The petition highlights that Congress has repeatedly chosen not to expand IPR prior art scope to include U.S. patent applications, despite multiple legislative opportunities. Since 1980, when Congress created ex parte reexamination proceedings, through the American Inventors Protection Act of 1999 and the AIA, statutory provisions on prior art "printed publications" were not amended to include U.S. patent applications.
Broader Implications for Patent System
The decision's potential consequences extend far beyond the immediate case. Lynk Labs (search) warns the ruling 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 company notes that U.S. patent applications remain a controversial form of prior art, which Congress allows for validity challenges in U.S. district courts under higher burdens of proof. Federal courts owe no deference to the Manual for Patent Examining Practice (MPEP) cited by Samsung (search) and other respondents in appellate briefing.
Conflict with Previous Federal Circuit Precedent
The petition also highlights inconsistency within Federal Circuit jurisprudence, noting the decision conflicts with the court's own 2022 ruling in Qualcomm (search) v. Apple (search). That case found limits to the scope of invalidating prior art available in IPR proceedings under Section 311(b) and rejected Apple's bifurcated approach of separately determining whether prior art is contained within a printed publication and whether the document qualifies as any type of prior art.
High-Stakes Patent Disputes at Risk
Citing multiple appeals regarding Section 311(b)'s scope currently pending before the Federal Circuit, Lynk Labs (search) urged Supreme Court review to address "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 the issue will remain critical for future patent disputes, the petition contends.