Federal Circuit Summary

Before Lourie, Dyk and Taranto. Consolidated Appeals from the Patent Trial and Appeal Board and the Southern District of California.

Summary: A person is a joint inventor of the anticipating portions of a reference for the purposes of 35 U.S.C. § 102(e) when the person’s contributions to that anticipating portion are significant in view of the invention as a whole.

IPS Group (“IPS”) filed suit in district court against Duncan Parking Technologies (“DPT”) alleging infringement of the ’310 and ’054 patents. DPT filed for inter partes review alleging that the ’310 patent claims were anticipated by portions of the ’054 patent under 35 U.S.C. § 102(e). Although the claims of the patents are similar, the ’310 patent named King and three others as inventors, while the ’054 patent named King and Schwarz as inventors. IPS argued that both the ’310 patent claims and the anticipating portions of the ’054 patent were solely King’s invention, and thus the ’054 patent was not that “of another” under 102(e). The Board agreed with IPS, finding that the inventions were that of King, alone, and that the ‘054 patent therefore was not prior art under section 102(e). DPT appealed.

The Federal Circuit disagreed with the Board, finding that Schwarz was a joint inventor of the relevant portions of the ’054 patent. The Federal Circuit explained that Schwarz’s contribution to the invention defined by the ’310 patent, as disclosed in the ’054 patent, was significant in light of the invention as a whole. Because the anticipating embodiment was the joint invention of King and Schwarz, a different inventive entity than that of the ’310 patent, it was prior art under 102(e). Accordingly, the Federal Circuit reversed the Board’s decision and held the claims of the ’310 patent unpatentable as anticipated by the ’054 patent.

Concurrently with the Board proceedings, the district court granted summary judgment of non-infringement of the ’310 and ’054 patents, which IPS appealed. In this combined opinion, the Federal Circuit affirmed the district court’s grant of summary judgment of non-infringement of the ’310 patent and vacated the district court’s grant of summary judgment of non-infringement of the ’054 patent, remanding the case for further proceedings consistent with the claim construction it set forth in the opinion.

This case is: DUNCAN PARKING TECHNOLOGIES v. IPS GROUP, INC.

Editor: Paul Stewart

Written by: Mark E. Davis & Karen M. Cassidy