Supreme Court Asked to Resolve ‘Secret Springing Prior Art’ Controversy in IPR Proceedings

by Dennis Crouch

Inter partes review have been shown to be a powerful mechanism for challenging and ultimately cancelling questionable patents.  The process was designed by Congress to be somewhat streamlined and thus has a strict limitation that IPR trials only focus on novelty/obviousness and, those challenges must be based only on "prior art consisting of patents or printed publications."  35 U.S.C. § 311(b).

In ordinary patent law, a prior art printed publication consists of some document that was published before the "critical date" of the patent application.  Although Section 102 was reorganized somewhat by the America Invents Act, this principle still rings true today as it has for the past 150+ years.

But, here is where it gets weird: in Lynk Labs, the Federal Circuit concluded that for the purposes of 311(b), a "prior art ... printed publication" includes documents that were published well after the challenged-patent's filings date. Treating these as two separate requirements, the court found that a reference could be used so long as it (1) qualified as prior art; and (2) was  ultimately published at some point.

Now, Lynk Labs has petitioned the Supreme Court for a writ of certiorari asking:

Whether patent applications that became publicly accessible only after the challenged patent’s critical date are “prior art * * * printed publications” within the meaning of 35 U.S.C.

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