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Federal Circuit Addresses Whether Anticipating Prior Art Reference is ‘By Another’ as Described in 35 U.S.C. § 102(e) – IPWatchdog.com

Federal Circuit Addresses Whether Anticipating Prior Art Reference is ‘By Another’ as Described in 35 U.S.C. § 102(e) - IPWatchdog.com

An individual will probably be thought-about a joint inventor with respect to an anticipating reference beneath 35 U.S.C. § 102(e) when the alleged joint inventor’s contributions to the parts of the anticipating reference relied on as prior artwork are vital sufficient when measured towards the complete anticipating disclosure.

The Federal Circuit lately overturned a Patent Trial and Attraction Board (Board) inter partes evaluation choice discovering that an IPS Group (IPS) patent was not unpatentable as anticipated, holding that the Board erred when figuring out the creative entities of the asserted IPS patent and the asserted prior artwork, which was a special IPS patent that shared an inventor with the opposite IPS patent. See Duncan Parking Techs. v. IPS Group, Inc., Nos. 2018-1205, 2018-1360, 2019 U.S. App. LEXIS 3137 (Fed. Cir. Jan. 31, 2019) (Earlier than Lourie, Dyk, and Taranto, J.) (Opinion for the Courtroom, Lourie, J.).

The claims at concern associated to parking meter know-how. IPS has two related patents for this know-how, the ’310 patent and the ’054 patent. The ’054 patent issued in 2013 from a 2006 Patent Cooperation Treaty (PCT) software. It named the Founding father of IPS, Dave King, and the Chief Technical Officer of IPS, Alexander Schwarz, as inventors. The ’310 patent was issued in 2010 and based mostly on an software filed in 2008. The ’310 patent named King, together with three different engineers, as inventors. The ’310 patent, nevertheless, didn’t disclose Schwarz as an inventor.

IPS filed a grievance towards Duncan Parking Applied sciences (DPT) asserting infringement of the ’054 and ’310 patents. The district courtroom granted abstract judgment to DPT on non-infringement for each the ’310 and ’054 patents. Additional, DPT petitioned the Board for inter partes evaluate of the ’310 patent. The Board instituted evaluation of the ’310 patent on the bottom that the ’054 patent anticipated the ’310 patent in mild of 35 U.S.C. § 102(e).


A patent is anticipated beneath 35 U.S.C. § 102(e) if “the invention was described in . . . a patent granted on an software for patent by one other filed in america earlier than the invention by the applicant for patent.” If an invention is made collectively by two inventors, it can’t be thought-about the only invention of both inventor individually.

On evaluation, IPS argued that the related parts of the ’054 patent have been solely King’s invention, not that “of one other” beneath Part 102(e), and, subsequently, the ’054 patent couldn’t be used as prior artwork towards the ’310 patent. In response, DPT argued that the ’054 patent was prior artwork as a result of Schwarz conceived at the very least a part of the ’054 patent’s related disclosure.

The Board held that, whereas Schwarz contributed to the creation of at the least a few of one determine within the ’054 patent, the Board was “skeptical that the overall recitation in [the claims] . . . constitue[d] greater than what Mr. King broadly envisioned.” Moreover, the Board discovered that DPT’s anticipation argument relied on content material of the ’054 patent that was clearly outdoors something related to the determine Schwarz contributed to. The Board finally held that King was the only inventor of the ’054 patent, and subsequently ’054 didn’t anticipate the ’310 patent as to render it unpatentable. DPT appealed the Board’s inter partes evaluation choice, and IPS appealed the district courtroom’s abstract judgment selections on non-infringement.

DPT’s Attraction

DPT argued on attraction that Schwarz was a joint inventor of the related parts of the ’054 patent, and that accordingly, the ’310 patent was anticipated by the ’054 patent. In return, IPS argued that the determine conceived by Schwarz was not mirrored within the ’310 patent claims at problem, so his contribution was irrelevant.

The Federal Circuit reversed the Board and sided with DPT, discovering that the ’054 patent anticipated the challenged claims of the ’310 patent. Federal Circuit precedent held that the reference in Part 102(e) to “by one other” signifies that “an software issued to the identical creative entity can’t qualify as § 102(e) prior artwork.” See, e.g. EmeraChem Holdings, LLC v. Volkswagen Grp. Of Am., Inc., 859 F.3d 1341, 1345 (Fed. Cir. 2017) (emphasis added).

To find out if the ’054 patent was “by one other,” the Board should: (1) decide what parts of the ’054 patent have been relied on as prior artwork to anticipate the ’310 patent, (2) consider the diploma to which these parts have been conceived “by one other” (Schwarz), and (three) determine whether or not Schwarz’s contribution was vital sufficient, when measured towards the complete anticipating disclosure, to render him a joint inventor of the utilized parts of the ’054 patent.

The Courtroom concluded that the Board erred in not holding that King and Schwarz have been joint inventors of the anticipating disclosure. The Courtroom discovered that the ’310 patent, on its face, required elements disclosed by the determine Schwarz conceived within the ’054 patent, and that Schwarz’s contributions to the ’054 patent have been vital in mild of the challenges confronted in creating the know-how resulting from how Schwarz’s contributions helped overcome a few of these challenges. Subsequently, the ’054 patent was invented by King and Schwarz collectively, which meant the ’054 patent had a special creative entity from that of the ’310 patent and rendered the ’310 patent unpatentable as anticipated.

IPS’s Attraction

The Courtroom affirmed the district courtroom’s grant of abstract judgment with respect to the ’310 patent, however vacated abstract judgment of non-infringement on the ’054 patent. The Courtroom took concern with the district courtroom’s declare development of “receivable inside” with respect to the ’054 patent. The district courtroom construed the time period to imply “able to being contained inside,” however when utilized that development as which means “able to being contained [entirely] inside.” The Federal Circuit held this slender studying was narrower than the plain which means of the time period and was unsupported by the specification or prosecution historical past. Furthermore, this slender development excluded the popular embodiment of the ’054 patent. Accordingly, the Courtroom vacated the grant of abstract judgment with respect to the ’054 patent and remanded for additional proceedings according to the Courtroom’s revised declare development.


Dustin Weeks

Dustin Weeks

is a Associate within the mental property apply group at Troutman Sanders. His apply spans all areas of mental property regulation, together with patent prosecution, patent litigation (together with Hatch-Waxman litigation), and shopper counseling. He represents shoppers starting from start-ups and solo inventors to Fortune 500 corporations. Dustin works intently together with his shoppers to study their enterprise aims in order that he can tailor methods to acquire, shield, and implement their mental property. Dustin focuses on post-grant proceedings (e.g. Inter Partes Critiques) earlier than the Patent Trial and Attraction Board (PTAB) the place he has in depth expertise representing each patent house owners and petitioners throughout a variety of applied sciences, together with wi-fi networking, prescription drugs, MEMs units, medical units, and electro-mechanical shopper units. Dustin’s broad expertise in patent prosecution, counseling, and patent litigation uniquely positions him to navigate the blended apply of post-grant proceedings.

For extra info or to contact Dustin, please go to his Agency Profile Web page.

Dustin Weeks

Robert Schaffer & Joseph Robinson


Robert Schaffer is an mental property companion at Troutman Sanders. Bob applies greater than 30 years of expertise to IP counseling and litigation. His work consists of patent procurement, strategic planning and transactional recommendation, due diligence investigations, district courtroom patent instances, and Federal Circuit appeals. He recurrently handles complicated and high-profile home and worldwide patent portfolios, mental property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed courtroom instances Bob’s work consists of representing and counseling shopper in ANDA litigations, complicated patent infringement instances and appeals, and multidistrict and worldwide instances. In disputed Patent Workplace issues his work consists of representing and counseling shoppers in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For extra info and to contact Bob please go to his profile web page on the Troutman Sanders web site.

Joseph Robinson has over 20 years of expertise in all points of mental property regulation. He focuses his apply within the pharmaceutical, life sciences, biotechnology, and medical system fields. His follow encompasses litigation, together with Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in quite a lot of patent and trademark disputes in many various jurisdictions, and has additionally served as appellate counsel earlier than the Courtroom of Appeals for the Federal Circuit. Joe additionally focuses on complicated inter partes issues earlier than the united statesPatent and Trademark Workplace, inventorship disputes, reexaminations and reissues. His expertise consists of quite a few interferences, a specific benefit in new U.S. Patent and Trademark Workplace post-grant proceedings. He additionally counsels on patent–associated U.S. Meals and Drug Administration points, together with citizen petitions, Orange E-book itemizing, and trademark points. For extra info and to contact Joe please go to his profile web page on the Troutman Sanders web site.

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