Whether an abandoned patent application that was not publicly accessible before a patent's critical date can nonetheless qualify as 'prior art' under the America Invents Act's inter partes review provisions

No question identified. : This Court has jurisdiction under 28 U.S.C. $1254(1). A copy of the court of appeals’ opinion is attached as Exhibit A, and a copy of the order denying rehearing is attached as Exhibit B. There is good cause for the extension. Undersigned counsel was retained by Lynk Labs for this matter on June 30, 2025, two weeks before the petition’s current deadline. In addition, counsel has been heavily engaged with the press of other matters and requires additional time to prepare the petition. 1. This case arises from an inter partes review (“IPR”) proceeding involving Lynk Labs’ U.S. Patent No. 10,687,400 (“the 400 patent”). Ex. Aat 2. The ’400 patent is directed to LED-based lighting systems with potential uses ranging from general lighting to string lights for Christmas trees. Jd. at 2-3. The patent has a priority date of February 25, 2004. Id. at 4 & n.1. In this case, respondent Samsung Electronics Co. filed an IPR petition challenging claims 7-13 and 17 of the ’400 patent. Id. at 3-4.! Lynk Labs argued that Samsung’s challenge was not authorized by statute. Under the America Invents Act (“AIA”), patent claims may be challenged “in an 99 66 inter partes review” “only on the basis of prior art consisting of patents or printed publications.” 35 U.S.C. §311(b) (emphasis added). Samsung’s petition challenged ' Samsung also challenged claims 14-16 and 18-20. Ex. A at 3. Lynk Labs statutorily disclaimed claims 14 and 18-20, and did not appeal the disposition of claims 15-16. Id. at 3-4 & n.3; see 35 U.S.C. § 253. each claim at issue based on an abandoned patent application known as “Martin” (U.S. Patent Application Publication No. 2004/0206970). Martin undisputedly never issued as a “patent.” Nor, Lynk Labs argued, was Martin a prior-art “printed publication.” Both before and after the AIA’s enactment, “[t]he statutory phrase ‘printed publication’ hal[d] been interpreted to mean that before the critical date [e.g., before the challenged patent’s priority date] the reference must have been sufficiently accessible to the public interested in the art.” Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1568 (Fed. Cir. 1988) (emphasis added) (citing In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986); In re Wyer, 655 F.2d 221, 226-227 (C.C.P.A. 1981)); see also Voter Verified, Inc. v. Premier Election Sols., Inc., 698 F.3d 1874, 1380 (Fed. Cir. 2012) (“When considering whether a given reference qualifies as a prior art ‘printed publication,’ the key inquiry is whether the reference was made ‘sufficiently accessible to the public interested in the art’ before the critical date.”); Valve Corp. v. Ironburg Inventions Ltd., 8 F.4th 13864, 1373 (Fed. Cir. 2021) (similar). Martin concededly was not a prior-art “printed publication” under that construction: It was not published or otherwise publicly accessible until October 21, 2004, months after the ’400 patent’s February 25, 2004 critical date. Ex. A at 4.2 Because Martin was 2 When assessing whether a reference is a prior-art printed publication, the “critical date” is the date before which the reference must have been a printed publication (i.e., publicly accessible). See, e.g., Valve, 8 F.4th at 1373; Ex. A at 7. That may be, for example, the date of “the invention” under pre-AIA 35 U.S.C. §102(a), or “the neither a prior-art “patent” nor a prior-art “printed publication,’ Lynk Labs maintained, it could not properly be the basis for this IPR under 35 U.S.C. $311(b). The Patent Trial and Appeal Board rejected that argument and issued a final written decision declaring claims 7-13 and 17 unpatentable. Ex. A at 4. For every claim, the Board based its decision on the abandoned Martin application. Ibid. 2. The Federal Circuit affirmed. The court acknowledged that IPRs may 733 be pursued “‘only on the basis of prior art consisting of patents or printed publications.’” Ex. A at 6 (quoting 35 U.S.C. §311(b)). The court acknowledged that Martin never issued as a “patent.” J