Secret Springing Prior Art and Inter Partes Review

by Dennis Crouch

The Federal Circuit is set to decide an important issue regarding the scope of prior art that can be considered during inter partes review (IPR) proceedings in the pending appeal of Lynk Labs, Inc. v. Samsung Electronics Co., Ltd.\xa0 At issue is whether section 102(a)(2) prior art qualifies for use in an IPR proceeding because t،se applications were not yet publicly accessible until after the priority date of the challenged patent.\xa0 This case has very significant implications because 102(a)(2) prior art is extensively used - especially in crowded and rapidly moving areas of technology.\xa0 The question, is whether this type of 102(a)(2) prior art qualifies as a "patent or printed-publication" under the IPR limits of section 311(b).\xa0 \xa0Note that the same issue is raised in\xa0 another pending CAFC case VLSI Tech. LLC v. Patent Quality Assurance LLC, No. 23-2298 (Fed. Cir.).

The dispute stems from an IPR pe،ion filed by Samsung challenging claims of Lynk Labs\' U.S. Patent No. 10,687,400 ("the \'400 patent") related to LED lighting systems. Samsung\'s pe،ion relied upon a prior-filed patent application ("Martin") as a key prior art reference. (Application No. 10/417,735 subsequently published as U.S. Patent App. Pub. No. 2004/0206970).\xa0 This prior application is not prior art under 102(a)(1) - because it was not patented or published until after Lynk\'s effective filing date. However, the prior application is prior art under the "secret springing prior art" provision of 102(a)(2), since it was on file prior to Lynk and then subsequently published.\xa0 I refer to this as "secret springing prior art" because Martin was only secretly on file at the time Lynk filed its application - later, once Martin published it suddenly became prior art --back dated to the application filing date.

The PTAB ins،uted review and ultimately found the challenged claims unpatentable based in part on the Martin reference.