Speck v. Bates: Unpacking the Federal Circuit’s Interference Ruling and its Impact on Derivation Proceedings

By C. Eric Osborn*

In what could be the Federal Circuit’s last precedential decision addressing a pre-AIA¹ interference proceeding, the court likely made it harder for patent applicants to successfully file post-AIA derivation petitions.² In Speck v. Bates, the Federal Circuit narrowed a longstanding exception to the one-year time bar for declaring interference proceedings.³ The decision is likely to impact derivation proceedings because it interpreted language that appears in both the pre-AIA and post-AIA statutes: “substantially the same.”⁴

Statutory Background

Interference proceedings, used before the AIA, were designed to resolve patent disputes over who was the first to invent a particular invention.⁵ With the introduction of the AIA, these proceedings were replaced by derivation proceedings, which address the related issue of one party claiming an invention derived from another’s work.⁶

Before the AIA, the United States Patent and Trademark Office (USPTO) resolved “first to invent” priority disputes in interference proceedings.⁷ The governing statute included a time bar that limited when a later-filed application could trigger an interference proceeding.⁸ Later-filed patent applicants could make claims “the same as, or for the same or substantially the same subject matter” as a previously published claim within one year of the claim’s publish date.⁹ If a later-filed patent applicant submitted such claims within the one-year period, the USPTO would institute an interference proceeding to determine the first inventor.¹⁰

There was a longstanding exception to that rule that leaves later-filed patent applicants some margin for error.¹¹ Later-filed patent applicants who exceeded the one-year time limit (the critical date) were not time-barred if they “had already been claiming substantially the same invention as the patentee” before the critical date.¹² That is, claim amendments made after the critical date were not time-barred if they were “substantially the same” as the pre-critical date claims.¹³

Congress replaced interference proceedings with derivation proceedings when it introduced the “first to file” system in the AIA.¹⁴ In the first to file system, it no longer matters who the first inventor is, so that aspect of the interference proceeding no longer exists under the AIA. But, the AIA still prohibits someone from claiming an invention that he derived from another’s work.  That is where derivation proceedings fit. A later-filed patent applicant commences a derivation proceeding by filing a petition with the USPTO.¹⁵ The petition asserts that a claimed invention of an earlier filed application was derived without authorization from the later-filed application’s inventor.¹⁶

Like interference proceedings, a one-year time bar applies to derivation proceedings.¹⁷ A derivation petition can be filed only for an invention “that is the same or substantially the same” as an invention in a published claim within one year of the publish date.¹⁸

Critically, both the derivation and interference statutes use the “substantially the same” standard.¹⁹ And in both proceedings, the USPTO cancels or rejects the derived or priority-lacking claims.²⁰

The Patent Office’s Analysis: A One-Way Test

Speck’s patent, related to drug-coated balloon catheters, issued on September 4, 2012.²¹ Bates filed an application, related to the same technology, on August 29, 2013.²² Bates’ application had a priority date of September 20, 2002.²³ On April 4, 2018 (after the critical date of September 4, 2012), Bates amended the patent to include language that caused the Patent Trial and Appeal Board (PTAB) to declare an interference proceeding.²⁴

To resolve the dispute, the PTAB applied a “one-way” test, meaning the post-critical date claims could be materially broader, but not materially narrower than the pre-critical date claims.²⁵ Using the “one-way” test, the PTAB held that the pre- and post-critical date claims were not materially different.²⁶ Bates’ post-critical date claims were not time barred.²⁷

The Federal Circuit’s Holding: A Two-Way Test

In Speck v. Bates, the Federal Circuit rejected the PTAB’s approach and held that a narrower two-way test applies.²⁸ It held that the PTAB’s “one-way test” “undermine[s] the requirement of lack of material difference” by “permit[ting] materially broader post-critical date claims to avoid” the time bar.²⁹ It instead adopted the “two-way” test: claims filed by the later-filed applicant after the critical date could not be materially narrower or broader than the pre-critical date claims.³⁰

Applying that test, the Federal Circuit reversed the PTAB’s determination that Bates’ pre-critical date claims were substantially the same as the amended post-critical date claims.³¹ The Federal Circuit held that the post-critical date claims were materially different from the pre-critical date claims.³² 

In reaching its decision, the Federal Circuit looked at two types of evidence: prosecution history and related interference proceedings.³³ During prosecution, Bates amended key limitations in both the pre-critical date claims and post-critical date claims to overcome obviousness rejections.³⁴ The post-critical date claim amendment made the claim broader than the amended pre-critical date claim.³⁵ And, during a related interference proceeding containing similar claims, Bates argued that the key limitation missing from the post-critical date claims was a novel characteristic.³⁶ Based on this record, the Federal Circuit held that the post-critical date claims were materially different from the pre-critical date claims and thus not excepted from the time bar.³⁷

Speck’s Effect on Derivation Proceedings

Though Speck addressed interference proceedings—which no longer exist under the AIA—the Speck decision has implications for post-AIA derivation because the statute governing derivation proceedings includes the “substantially the same” standard addressed in Speck.³⁸

Given the similar language, Speck likely makes it harder for petitioners to institute a derivation proceeding if they have amended their claims after the critical date. Using Speck as a guide,the Federal Circuit and PTAB could look to the prosecution history of pre- and post-critical date claims in derivation proceeding time-bar analysis. Additionally, any related proceedings involving the claims at issue will likely be scrutinized.

Key Takeaways:

• The “two-way test”’ means that any amendments made to claims after the critical date must closely match the original claims to avoid being barred.
• Prosecution history and related proceedings may be scrutinized more closely in determining whether post-critical date amendments introduced material differences.

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* C. Eric Osborn, J.D. Candidate, University of St. Thomas School of Law Class of 2025 (Senior Editor). Thank you to Sarah Jack for her excellent editing help. All mistakes are my own.

1. “AIA” stands for America Invents Act. ↩︎
2. See generally Speck v. Bates,102 F.4th 1304 (Fed. Cir. 2024). ↩︎
3. See id. ↩︎
4. See pre-AIA 35 U.S.C. § 135(b); 35 U.S.C. § 135(a)(2); Speck, 102 F.4th at 1312. ↩︎
5. See pre-AIA 35 U.S.C. § 135. ↩︎
6. See 35 U.S.C. § 135. ↩︎
7. See pre-AIA 35 U.S.C. § 102(g); pre-AIA 35 U.S.C. § 135(a); United States Patent and Trademark Office, Interference Proceedings, Manual of Patent Examining Procedure § 2301(9th ed., rev. July 2022) [hereinafter MPEP]. ↩︎
8. See pre-AIA 35 U.S.C. § 135(b). ↩︎
9. Id. ↩︎
10. See id. § 135(a); SNIPR Techs. Ltd. v. Rockefeller Univ., 72 F.4th 1372, 1376 (Fed. Cir. 2023). ↩︎
11. See Speck, 102 F.4th at 1307. ↩︎
12. Id. (citation omitted). ↩︎
13. See, e.g., Speck, 102 F.4th at 1307. ↩︎
14. See SNIPR Techs., 72 F.4th at 1375–76; compare pre-AIA 35 U.S.C. § 135 with 35 U.S.C. § 135. ↩︎
15. 35 U.S.C. § 135(a)(1); MPEP § 2310 (“Derivation Proceedings”). ↩︎
16. 35 U.S.C. § 135(a)(1); MPEP § 2310 (“Derivation Proceedings”). ↩︎
17. Compare pre-AIA 35 U.S.C. § 135(b) with 35 U.S.C. § 135(a)(2). ↩︎
18. 35 U.S.C. § 135(a)(2). ↩︎
19. Pre-AIA 35 U.S.C. § 135(b); 35 U.S.C. § 135(a)(2). ↩︎
20. See pre-AIA 35 U.S.C § 135(a); 35 U.S.C. § 135(d). ↩︎
21. Speck,102 F.4th at 1307–08. ↩︎
22. Id. at 1308. ↩︎
23. Id. ↩︎
24. Id. ↩︎
25. See id. at 1310–12. ↩︎
26. Id. at1308–09. ↩︎
27. Id. at 1308. ↩︎
28. See id. at1312. ↩︎
29. Id. ↩︎
30. See id. at 1310–12. ↩︎
31. See id. at1308–09, 1314. The critical date was one year from the earlier-filed patent’s issue date. Id. at 1308. ↩︎
32. Id. at1314. ↩︎
33. See id. at 1313. ↩︎
34. Id. ↩︎
35. See id. ↩︎
36. Id. at 1313. ↩︎
37. Id. at 1313–14. ↩︎
38. See id. at 1307; SNIPR Techs.,72 F.4th at 1375–76; 35 U.S.C. § 135(a)(2); compare pre-AIA35 U.S.C. § 135 with 35 U.S.C. § 135. ↩︎