Navigating The Nuances Of § 102(e): A Critical Look At State Designation In PCT Applications And Its Impact On Patent Litigation – Patent

04 April 2024

Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

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Patent prac،ioners continue to navigate the complexities
introduced by the America Invents Act (AIA); they focus, ،wever,
less on the nuances of pre-AIA provisions. Yet, a recent ruling by
the U.S. District Court for the District of Minnesota highlights a
critical requirement for considering prior art under Pre-AIA §
102(e), especially in the context of Patent Cooperation Treaty
(PCT) applications.

In Regents of the Univ. of Minnesota v. AT&T Mobility
, No. CV 14-4666 (JRT/TNL) (D. Minn. Feb. 23, 2024), the
district court held that for a PCT application to serve as prior
art under § 102(e), it must explicitly designate the U.S.
Here, Defendants used a PCT application that failed to make such a
designation and as such, was not prior art to the patents at issue
as a matter of law. The court did allow Defendants subs،ute a
U.S. priority application as prior art.

District Court

The litigation centered on allegations of patent infringement
involving patents related to cellular data transmission technology
in USPs 7,251,768; 8,588,317; 8,718,185; 8,774,309; and

In 2014, the Regents of the Univ. of Minnesota (“UMN”)
filed a complaint a،nst several cellular network companies for
patent infringement. Defendants identified a significant prior art
reference, the PCT Publication No. WO 03/085875 (“Ming
PCT”), which they argued “undermines the validity of the
‘230 and ‘768 patents” due to its earlier priority
date. Id. at *7.

UMN moved, ،wever, for summary judgment, arguing that the
“Ming PCT” s،uld not be considered prior art because it
failed to explicitly “designate” the U.S. The dispute
centered on whether the Ming PCT met the pre-AIA 35 U.S.C. §
102(e) criteria for prior art. Section 102(e) specifies that an
international application must designate the U.S. and be published
in English under the PCT to be considered as prior art in the

UMN pointed out that the PCT application’s “Designated
States” section designated several countries but not the U.S.
Id. at *9. Defendants offered a broader interpretation of
“designation,” suggesting that seeking priority for its
U.S. counterpart (“Ming US application”) implies a U.S.
designation. They argued that indicating a U.S. patent for priority
suggests an intent to seek patent protection in the U.S.
Id. at *10.

The court rejected this broader interpretation. It ruled that
the Ming PCT’s omission of the U.S. in the “Designated
States” section prevented it from considered as prior art
under § 102(e). The court’s decision emphasized that
designation must be explicit and clear, a principle supported by
the Manual of Patent Examining Procedure Appendix T Article 8,
leading to the grant of UMN’s motion for summary judgment; the
court did not allow Defendants to argue invalidity on the basis of
the Ming PCT. Id. at *11.

In a separate argument, Defendants suggested that their
invalidity expert s،uld be permitted to use the Ming US
application as a subs،ute for the Ming PCT to support his prior
art ،ysis. Id. Despite the expert’s initial focus
on the Ming PCT as prior art, the court allowed this subs،ution,
noting that the two applications substantively contained identical
disclosures. Id. Further, the court did not consider such
a subs،ution to introduce a new ground of invalidity.
Id. at *11-12.


When selecting a patent application as prior art, it’s
essential to remember that under Pre-AIA § 102(e), failure to
designate the U.S. under the “Designated States” section
can preclude a PCT application from being considered as prior

The content of this article is intended to provide a general
guide to the subject matter. Specialist advice s،uld be sought
about your specific cir،stances.

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