Thursday, January 31, 2019

The CAFC analyzes the “of another” portion within 35 U.S.C. § 102(e) in Duncan Parking v. IPS

This CAFC decision in Duncan Parking involved combined reviews
of a Board and of a district court decision:

We reverse the Board’s decision in the 1205 Appeal
that claims 1–5 and 7–10 of the ’310 patent are not unpatentable as anticipated.
We affirm the district court’s
decision in the 1360 Appeal granting summary judgment
of noninfringement of the ’310 patent. Finally, we vacate
the district court’s decision in the 1360 Appeal granting
summary judgment of noninfringement of the ’054 patent
because the district court erred in construing the claims
too narrowly, and we remand the case to the district court
for further proceedings consistent with the claim construction we set forth.

The technology involved parking meters. IPS is the patentee
with CEO Dave King and Chief Technical Officer
Alexander Schwarz.

Of the anticipation issue:

Meanwhile, shortly after IPS filed its complaint, DPT
petitioned in the U.S. Patent and Trademark Office for
inter partes review of claims 1–5 and 7–10 of the ’310
patent. The Board instituted a review on the ground that
the ’054 patent anticipates the ’310 patent under
35 U.S.C. § 102(e). After institution, IPS chose not to
dispute whether, on the merits, the ’054 patent anticipates the ’310 patent claims.

IPS instead argued in its
Patent Owner Response that the anticipating portions of
the ’054 patent are solely King’s invention, not that “of
another” under 35 U.S.C. § 102(e),
and therefore cannot
be applied as prior art against the ’310 patent claims. To
support its argument that King alone conceived the
relevant disclosure, IPS submitted declarations from
King, Schwarz, and David Jones—an engineer from D+I
and a named inventor of the ’310 patent—along with
contemporaneous documents reflecting the invention’s
development from 2003 to 2005. In the Petitioner’s Reply,
DPT argued that the ’054 patent is prior art because
Schwarz conceived at least a portion of the ’054 patent’s
anticipating disclosure.

The CAFC wrote:

We must review here whether the Board erred in concluding that
the applied portions of the ’054 patent were
invented by King alone and not by King and Schwarz
jointly. See In re DeBaun, 687 F.2d 459, 463 (CCPA
1982). If Schwarz is a joint inventor of the anticipating
disclosure, then it is “by another” for the purposes of §
102(e). In re Land, 368 F.2d 866, 879 (CCPA 1966) (“[A]n
invention made jointly by A & B cannot be the sole invention of A or B . . . .”).
To be a joint inventor, one must:
(1) contribute in some significant manner to the
conception or reduction to practice of the invention, (2)
make a contribution to the claimed invention that is not insignificant in quality, when that
contribution is measured against the dimension of
the full invention, and (3) do more than merely
explain to the real inventors well-known concepts
and/or the current state of the art.
In re VerHoef, 888 F.3d 1362, 1366 (Fed. Cir. 2018)
(quoting Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir.
1998)). “The law of inventorship does not hinge coinventorship status
on whether a person contributed to
the conception of all of the limitations in any one claim of
the patent. Rather, the law requires only that a coinventor
make a contribution to the conception of the
subject matter of the claim.” Eli Lilly & Co. v. Aradigm
Corp., 376 F.3d 1352, 1361–62 (Fed. Cir. 2004); see Fina
Oil & Chem. Co. v. Ewen, 123 F.3d 1466, 1474 (Fed. Cir.

Thus, 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. We conclude that the
Board erred in not holding that King and Schwarz are
joint inventors of the anticipating disclosure.

Of a separate doctrine of equivalents argument made
by patentee:

We agree with DPT that the Liberty Meter’s keypad
does not work in the same way as the claimed invention.
Under the doctrine of equivalents, a product or process
that does not literally infringe a patent claim may nevertheless
be held to infringe “if it performs substantially the
same function in substantially the same way to obtain the
same result.” Graver Tank & Mfg. Co. v. Linde Air Prods.
Co., 339 U.S. 605, 608 (1950) (quoting Sanitary Refrigerator Co. v. Winters,
280 U.S. 30, 42 (1929)). But the doctrine of equivalents
cannot be used to effectively read out
a claim limitation, Primos, Inc. v. Hunter’s Specialties,
Inc., 451 F.3d 841, 850 (Fed. Cir. 2006), because the
public has a right to rely on the language of patent claims.
See London v. Carson Pirie Scott & Co., 946 F.2d 1534,
1538 (Fed. Cir. 1991) (“[I]f the public comes to believe (or
fear) that the language of patent claims can never be
relied on, and that the doctrine of equivalents is simply
the second prong of every infringement charge, regularly
available to extend protection beyond the scope of the
claims, then claims will cease to serve their intended


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