By Amanda Leckman and Carl Kukkonen
In connection with a dispute over parking meters, the PTAB, on March 27, 2017, issued a decision in IPR2016-00067 that Duncan Parking Technologies, Inc. (DPT) had not met its burden of showing, by a preponderance of evidence, that claims 1-5, 7, and 9 of the U.S. Patent No. 7,854,310 (“the ‘310 patent”), owned by IPS Group, Inc. (IPS), were anticipated under 35 U.S.C. §102(e). With respect to claims 8 and 10, however, DPT met the requisite burden such that these claims were found to be unpatentable.
U.S.C. §102(e) serves as a barrier to patentability if the subject 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.” “By another” refers to a different inventive entity, such that prior works with a different inventive entity bar patentability under §102(e). In cases where the prior work has multiple named inventors, and one or more of the named inventors is named in the patent at issue, the court must determine inventorship as to each claim in issue and apply the rule accordingly.
The issues at dispute were whether the ‘310 patent was anticipated by U.S. Patent No. 8,595,054 (King ‘054) and whether the inventive entities of the ‘310 patent and King ‘054 were different. Both patents relate to parking meter technology, name multiple inventors, and name Mr. King as one of the inventors.
As to claims 1-5, 7, and 9, the PTAB concluded Mr. King was the sole inventor of the applied portions of King ‘054. Though DPT argued that correspondence between Mr. King and another inventor indicated that the two of them jointly invented the ‘310 patent, the PTAB concluded that collaboration in developing an operable, commercial product, did not, itself, establish joint inventorship for all claims, and perfection or reduction to practice did not negate Mr. King’s claim of sole inventorship. Because the inventive entities for these claims was the same, claims 1-5, 7, and 9 were not anticipated under §102(e).
With respect to claims 8 and 10, IPS argued that King ‘054 did not disclose all of the recited elements, but the PTAB found otherwise. Since the parties agreed that all four of the named inventors of the ‘310 patent contributed to these claims, and Mr. King was the only inventor of the four associated with King ‘054, the inventive entity of claims 8 and 10 of the ‘310 patent was different than that of King ‘054. As such, the PTAB concluded that claims 8 and 10 were unpatentable under 35 U.S.C. §102(e).
This decision evidences that a party that can prove that the alleged anticipated claim has the same inventive entity as the disclosure in the prior work will prevail under §102(e). If the two patents have multiple inventors with at least one inventor in common, then that party will need to show that the inventor(s) who conceived of the alleged anticipated claim was the same as the inventor(s) who conceived of the disclosure in the prior work.
Carl Kukkonen
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