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Invention by Another – How the Prior Art Status of a Reference Can Be Affected by the Significance of a Joint Inventor’s Contribution to that Reference

Calmann Clements
Haynes and Boone, LLP

At times, a patent owner’s previous patent can be used as a prior art reference against their later filed patents. A reference is prior art under pre-AIA 35 U.S.C. 102(e) if it was “described in … an application for patent … by another.” A patent is “by another” if it lists a different set of inventors than the patent at issue. In other words, if a patent owner’s previously filed patent lists one inventor that is not listed on their later filed patent, the previously filed patent is “by another” and may qualify as prior art for the later filed patent. This issue was explored further in Duncan Parking Technologies, Inc., v. IPS Group Inc., (Appeal No. 2018-1205, Fed. Cir. Jan. 31., 2019), where the Federal Circuit overturned the PTAB’s finding that portions of the anticipatory reference used in an Inter Partes Review (IPR) proceeding were not by another and therefore did not anticipate the challenged claims.


IPS Group Inc. (“IPS”) designs parking meter technology and is run by CEO Dave King and CTO Alexander Schwarz. King and Schwarz developed parking meter technology that allows for the retrofitting of coin-operated parking meters to be credit-card enabled and solar powered. While King was responsible for conceiving of the overall concept, Schwarz conceived many of the implementation details for how to make the technology work, particularly with regard to the electronic systems.

IPS filed a PCT application on December 4, 2006, which eventually issued as U.S. Patent No. 8,595,054 (’054 patent). The ’054 patent listed both King and Schwarz as the inventors. Later, on February 27, 2008, IPS filed another patent which ultimately issued as U.S. Patent No. 7,854,310 (’310 patent). The ’310 patent listed King and others, but not Schwarz, as the inventors.

IPS filed suit against Duncan Parking Technologies (“Duncan”) alleging infringement of both the ’310 and ’054 patents. Duncan responded in part by filing an IPR petition against the ’310 patent using the ’054 patent as an anticipatory reference (IPR2016-00067). After institution, IPS did not dispute that the teachings of the ’054 patent anticipated the claims of the ’310 patent, and instead argued that the teachings of the ’054 patent relied upon in the Petition were conceived of by King alone, and not Schwarz. Specifically, IPS argued that while the record showed that Schwarz had contributed to the electronic diagram of Fig. 8, “Schwarz’s conception of aspects of Figure 8 not recited in the ’310 claims is irrelevant.” Duncan Parking Technologies at 14. Therefore, IPS argued, the teachings of the ’054 patent relied upon in the Petition were not “by another” and therefore not prior art. The PTAB agreed with IPS and issued a Final Written Decision holding that the claims were not unpatentable. See id. at 12-13.


Upon review, the Federal Circuit disagreed with the PTAB and held that the teachings of the ’054 patentt relied upon in the Petition were indeed “by another”, and therefore such teachings qualified as prior art. The Court noted that a patent is anticipated under 35 U.S.C. § 102(e) if “the invention was described in . . . a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent” (emphasis added). “The statute’s reference to ‘by another’ means that an application issued to the same inventive entity cannot qualify as § 102(e) prior art.” EmeraChem Holdings, LLC v. Volkswagen Grp. of Am., Inc., 859 F.3d 1341, 1345 (Fed. Cir. 2017) (citing Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1355–56 (Fed. Cir. 2003)).

The Court provided the test to be used in such situations. Specifically,to decide whether a reference patent is “by another” for the purposes of 35 U.S.C. § 102(e), the Board must (1) determine what portions of the reference patent were relied on as prior art to anticipate the claim limitations at issue, (2) evaluate the degree to which those portions were conceived “by another,” and (3) decide whether that other person’s contribution is significant enough, when measured against the full anticipating disclosure, to render him a joint inventor of the applied portions of the reference patent.  Duncan Parking Technologies at 15-16.

Based on the record, the Court found that Schwarz had conceived of “much of the ’054 patent’s electrical system, including designing the diagram showing how all the electronic components are connected.” Id. at 17. According to the record, Schwarz invented “how the various electrical components of the meter are interconnected and operate together.” Id. Schwarz’s block diagram, depicted in Figure 8, organizes 26 separate electrical components and specific electrical connections between them. ’054 patent Fig. 8; Duncan Parking Technologies at 17. The Court concluded that the record showed that Schwarz conceived many of these details. See Duncan Parking Technologies at 17.

The Court further found that these details were significant in light of the invention as a whole, characterizing the creation of the diagram as “no minor task.” Id. at 18. The record showed that Schwarz went to great lengths to create the diagram and that the concepts therein were used to overcome the “two big hurdles” for the invention. Id. The Court gave further weight to the fact that the ’054 patent described only a single embodiment, and that Fig. 8 was essential to that embodiment. See id. The Court thus concluded that “the anticipating embodiment was the joint invention of King and Schwarz, an inventive entity different from that of the ’310 patent, and the ’054 patent is prior art under 35 U.S.C. § 102(e).” Id.


For IPR practitioners, this case identifies a potential pitfall associated with using a patent owner’s own references as prior art under pre-AIA 35 U.S.C. 102(e). While the facts in this case turned out favorably for the Petitioner, other cases may not go the same way. For example, it may come out during discovery that the “other” inventor did not contribute much to the patent at all, and the Board may conclude that the “other” inventor’s contributions were not “significant enough,” thereby rendering the prior art reference not “by another.” Accordingly, it may be worthwhile to exhaust other options before relying on a patent owner’s own reference as prior art under pre-AIA 35 U.S.C. 102(e).

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