The Federal Circuit clarified that a published U.S. application (published application) is available for IPR as long as its filing date (its “effectively filed” date in AIA vernacular) is before the priority date of the challenged patent, even if the publication date of the published application is after the priority date of the challenged patent.
A published application is available as prior art as a printed publication under pre-AIA sections 102(a) and 102(b) as of its publication date, but (like a U.S. patent) is also available under as prior art under pre-AIA section 102(e) as of its filing date. The AIA retains this attribute of published applications: a published application is available as prior art under section 102(a)(1) as of its publication date, and is also available under as prior art under section AIA 102(a)(2) as of its filing date (effectively filed date).
Lynk Labs argued that, despite the available of a published application as prior art under pre-AIA section 102(e) as of its filing date, a published application is not available for use in an IPR unless that published application was published or accessible to the public prior to the priority date of the challenged patent. Section 311(b) limits the scope of an IPR to “ground[s] that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” Lynk Labs’ argument is based upon a nuanced reading of section 311(b), that the scope of IPRs is limited to “prior art” patents and “prior art” printed publications, and that while a patent have a prior art effect of under pre-AIA section 102(e)(2) as a “patent,” a “prior art” printed publication is effective as prior art only as of its publication date (or public accessibility date). That is, since section 311(b) refers to patents and printed publications, but does not specifically call out published applications, the provision of section 102(e)—giving prior art effect as of the filing date—applies to patents as used in section 311(b) but does not apply to published applications as published applications are not specifically mentioned in section 311(b).
The Federal Circuit agreed that a published application is a “printed publication,” but pointed out that that a published application is a specific type of printed publications, a type of “printed publication” that by virtue of section 102(e)(1) is prior art as of its filing date. The Federal Circuit thus concluded that the plain language of sections 311 and 102(e) permit an IPR challenge based upon published applications and that such published applications are effective as prior art as of their filing date.
The Federal Circuit rejected Link Labs’s arguments concerning the case law requirements of public accessibility, not only that a reference be accessible to the public but when it must be accessible to the public, to quality as a “printed publication.” The Federal Circuit discussed the legislative background of reexamination (added in 1980) , inter partes reexamination and eighteen-month publication with the prior art effect of published applications (added in 1999), and IPR—replacing inter partes reexamination (in 2011). The Federal Circuit rejected the argument that published applications are not printed publications, or are printed publications only if accessible to the public before the priority date of the challenged patent, as based upon case law (or “old soil”) from an era before pending patent applications were published. Thus Federal Circuit thus disagreed with the contention that a published application is a “prior art” “printed publication” for purposes of 311(b) only as of the date it is published or accessible to the public.
In short: a published application is available for IPR as long as its filing date is before the priority date of the challenged patent, even if the publication date of the published application is after the priority date of the challenged patent.
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