Last week the Federal Circuit issued its opinion in Lynk Labs, Inc. v. Samsung Electronics Co., a patent case that we have been watching because it attracted four amicus briefs. In this case, the Federal Circuit reviewed an appeal from a decision of the Patent Trial and Appeal Board in an inter partes review proceeding that certain patent claims are unpatentable in light of prior art. The oral argument focused on “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 argued 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. The Federal Circuit, however, in an opinion authored by Judge Prost and joined by Judge Lourie and Judge Stark, affirmed the Board. It found no error in the Board’s unpatentability determinations using, as the relevant date for prior art purposes, the abandoned patent application’s filing date. This is our opinion summary.
Judge Prost began by outlining the procedural and factual background of the case:
The ’400 patent ‘generally relates to light emitting diodes (‘LED’) and LED drivers’ and more ‘specifically relates to alternating current (AC) drive LEDs, LED circuits and methods.’ . . . The specification explains that ‘LED based lighting may be used for general lighting, specialty lighting, signs[,] and decoration such as for Christmas tree lighting.’ In November 2021, Samsung . . . filed a petition for IPR of the ’400 patent, challenging claims 7–20 as unpatentable for obviousness under 35 U.S.C. § 103. . . . Relevant here are Samsung’s first six grounds of unpatentability, each of which relied on [Martin] . . . . The Martin application was filed before the ’400 patent’s priority date but was published only after that date. . . . Martin was filed on April 16, 2003; the ’400 patent’s priority date is February 24, 2004. . . . [T]he Board determined claims 7–13 and 17 unpatentable for obviousness. After rejecting Lynk Labs’ argument that Martin could not serve as prior art to the ’400 patent in an IPR, the Board determined that each of the claims . . . would have been obvious in view of Martin . . . . Five of the six grounds at issue rely on Nerone as the primary reference in view of at least Martin, and the Board relied on the combination of Nerone and Martin to determine claims 7–13 unpatentable. . . . Lynk Labs timely appealed. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
Judge Prost began her analysis for the Federal Circuit by explaining that the panel would review statutory interpretation, claim construction, and the “Board’s legal determination of obviousness de novo.” But, she continued, the Federal Circuit would review “factual findings for substantial evidence.”
Next, she outlined Lynk Labs’ “three main arguments on appeal: (1) Martin could not serve as prior art . . . because, although Martin was filed before the ’400 patent’s priority date, it was published . . . only thereafter; (2) the Board erred in construing ‘an LED circuit comprising a plurality of LEDs connected in series’ . . .; and (3) the Board erred in construing ‘a forward voltage of the LEDs of the LED circuit array matches the rectified input AC voltage out of the driver.’” As to the claim-construction arguments, she explained, Lynk Labs “further argue[d] that, under what it views as the proper constructions,” claims 7–13 were not obvious.
Judge Prost turned to Lynk Labs’ first argument, that “Martin cannot be a ‘prior art . . . printed publication[]’” because it became “publicly accessible only as of its October 21, 2004 publication date,” which was after “the ’400 patent’s priority date” of February 25, 2004. Judge Prost rejected the argument. She suggested Lynk Labs ignored “§ 102(e)(1)––a special rule for published patent applications.” Under that subsection, she explained, “even if a patent application was published after a claimed invention, it may serve as prior art to the invention if the application was filed before the invention.” Thus, she concluded, Martin “is a prior art printed publication as to the ‘400 patent” because Martin was filed “before the ’400 patent’s priority date.”
Judge Prost indicated “printed publications” and “application[s] for patent” need not be “completely distinct things.” She explained that, like a lion, which is just “a specific type of mammal[,]” an “‘application for patent, published under [§] 122(b)’ is just a specific type of ‘printed publication.’” Thus, she continued, “a published patent application” is a “printed publication.” As a result of her analysis, she concluded that, “when § 311(b) permits IPR challenges based upon ‘prior art . . . printed publications,’ it includes” published patent applications. Because a published patent application “is deemed prior art as of its filing date,” she said this “permits IPR challenges based upon published patent applications,” which are “deemed prior art in IPRs as of their filing date.”
Given her conclusion that Martin qualified as prior art, Judge Prost turned to “the merits of the Board’s decision.”
As to “an LED circuit comprising a plurality of the LEDs connected in a series,” Judge Prost explained that Lynk Labs argues it refers to “individual LEDs” and not “LED circuits” connected in a series. Judge Prost however, “agree[d] with the Board’s construction” that the claim limitation may refer to both and its conclusion that “Nerone teaches this claim limitation.” She explained that the “disclosures in the specification” indicated that the plain and ordinary meaning of the phrase could include “individual” or “groups” of LEDs “connected in series” because both include a “plurality.” She explained that, since “the Board did not err in construing the term,” no dispute remained because “it [was] undisputed that the prior art” disclosed the claim limitation.
Judge Prost moved on to the next claim limitation, “a forward voltage of the LEDs of the LED circuit array matches the rectified input AC voltage output of the driver.” According to Judge Prost, Lynk Labs asserted “matches” means “equivalent,” while the Board found that the limitation, “in view of the specification, encompasse[d] ‘the rectified input AC voltage output of the driver’ that is less than ‘a forward voltage of the LEDs of the LED circuit.’” Judge Prost agreed with the Board, indicating that, “[n]ot once but twice, the specification explains the relationship” between the AC voltage output and forward voltage as “less than or equal to.”
Lasty, Judge Prost suggested that, while Lynk Labs referred to an argument regarding “rectified” as a claim construction dispute, Lynk Labs really disputes whether “Martin ‘discloses the rectified input AC voltage output of the driver.” Based on “a person of ordinary skill,” Judge Prost highlighted, “the combined teachings of Nerone and Martin teach or suggest [this] limitation.” For those reasons, Judge Prost explained, the Federal Circuit affirmed the Board’s determination that “claim 7 would have been obvious in view of Nerone and Martin.”
In sum, the Federal Circuit affirmed the Board’s holding.