March 29, 2024
Authored and Edited by Pu-Cheng (Leo) Huang; Adriana L. Burgy; Stacy Lewis†
Patent practitioners continue to navigate the complexities introduced by the America Invents Act (AIA); they focus, however, 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 LLC, 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 substitute a U.S. priority application as prior art.
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 RE45,230.
In 2014, the Regents of the Univ. of Minnesota (“UMN”) filed a complaint against 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, however, for summary judgment, arguing that the "Ming PCT" should 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 U.S.
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 should be permitted to use the Ming US application as a substitute for the Ming PCT to support his prior art analysis. Id. Despite the expert’s initial focus on the Ming PCT as prior art, the court allowed this substitution, noting that the two applications substantively contained identical disclosures. Id. Further, the court did not consider such a substitution 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 art.
†Stacy Lewis is a Law Clerk at Finnegan.
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