Last week, the Federal Circuit heard oral argument in Lynk Labs, Inc. v. Samsung Electronics Co., a patent case that attracted four amicus briefs. In this case, the Federal Circuit is reviewing a judgment of the Patent Trial and Appeal Board in an inter partes review proceeding, which found all challenged patent claims unpatentable. The argument focused on the fourth issue presented, “whether the Board erred in determining that . . . a published and later abandoned U.S. patent application . . . can be applied in an IPR as a ‘printed publication’ under 35 U.S.C. § 311(b).” That statutory subsection says that “a petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent . . . only on the basis of prior art consisting of patents or printed publications.” What the appellant and one amicus brief argue is that a patent application that never issues as a patent is not a patent nor does it qualify as a printed publication when its publication date is after the effective filing date of the patent subject to the inter partes review proceeding. Judge Lourie, Prost, and Stark heard the oral argument. This is our argument recap.
Stephen T. Schreiner argued for Lynk Labs. He began with an outline of the issues presented in the appeal. He was quickly asked by a judge about why the court should deviate from the Patent and Trademark Office’s established practice treating Martin, the abandoned patent application here, as a printed publication. Schreiner responded that “[t]he province of the court is to interpret the statute and not defer to PTO practice or even PTO agency interpretation.” He went on to explain that “we don’t have any agency interpretation here.” In particular, he said, “we have no regulations set forth by the Office” indicating this type of prior art is within 35 U.S.C. § 102.
Another judge asked if the statute referencing printed publications includes published patent applications. Schreiner responded by arguing a published patent application is a printed publication as of “some date.” The judge then remarked that, until the American Inventors Protection Act of 1999, there was a not a publication requirement for patent applications under the statute. She went on to ask if the statute “in any way dictate[s] that certain public printed publications have some certain treatment with respect to the filing date and others have a different treatment.” In response, Schreiner argued that, in 1999, “Congress had the opportunity to change the language governing what types of prior art can be used in these post grant proceedings.” But, he highlighted, it “did not change the language.” He said “if Congress wanted to introduce and include a new category of prior art they would have done so.”
Naveen Modi argued for Samsung Electronics. Before making any substantive argument, he was asked by a judge “why a printed publication . . . gets its prior art filing date before it is publicly available.” Modi argued in response that the answer goes back to § 311(b), which “refers to printed publication” as “merely a category of prior art.” He argued that Lynk Labs admits all applications are printed publications, so the question is “what is the effective date of the publication.” The answer, he said, is specified by § 102. He clarified that under § 102(e) patent applications are prior art as of their filing dates. And, he argued, “Congress did not intend to exclude publications” from being considered prior art as of their filing dates.
Modi then addressed a judge’s question about how to understand congressional treatment of the effective date of prior art. He argued that “Congress knew what it was doing.” He explained that Congress used a broad term, “printed publication.” But, he said, the statutory provision made “‘patent applications’ publications.” For over twenty years, the PTO, the Board, and the courts, he argued, have interpreted the statute to mean that published patent applications are prior art. He concluded his argument by emphasizing the history of PTO practice.
Michael S. Forman argued on behalf of the Intervenors, the PTO. He argued that the problem with Lynk Lab’s argument is that it ignores the fact that the statute for an IPR “imposes two separate requirements.” A reference “both has to be prior art and then it has to be either a patent or printed publication.” He maintained “there is no dispute that a published patent application is a printed publication.” He explained the question is when does a “printed publication become prior art.” He argued the answer is in the statute, and that the application “becomes prior art as of its filing date.” Forman concluded his argument by suggesting that ruling in favor of Lynk Labs goes against “the policies and intent” behind the statute, made clear by the Federal Circuit’s precedent.
In his rebuttal, Schreiner was asked by a judge what 35 U.S.C. § 102(e)(1) means. He answered that the statute expresses that a patent application that is published is effective as prior art as of its filing date. Schreiner then addressed the arguments around congressional intent and legislative history. He maintained “there is no legislative history indicating that Congress implicitly re-wrote the very same language” that “prior art consisted of patents or printed publications to mysteriously include the newly created category of § 102(e)(1).” He further emphasized that Congress elected not to modify the statute defining prior art in post grant proceedings. He said that, if Congress wanted to “include § 102(e)(1), they would have done so.”
We will continue monitoring the case and report on any developments.