PTAB Considers What Constitutes “By Another” Under § 102(e) in Determining Whether Challenged Claims are Unpatentable

Written by Benjamin Anger and Vikas Bhargava

In a final written decision in Duncan Parking Tech., Inc. v. IPS Group Inc., IPR2016-00067, Paper 29 (P.TA.B. Mar. 27, 2017), the PTAB evaluated whether a prior art reference alleged to anticipate the challenged patent under 35 U.S.C. § 102(e) was a patent “by another.”  This case is unusual because the PTAB upheld certain claims even though the parties agreed that the claimed subject matter of the challenged patent was disclosed in a single prior art patent having a different inventive entity.

The challenged patent is directed to a solar powered and credit card enabled parking meter.  It lists four named inventors including an individual named David William King.  The PTAB instituted the IPR on claims 1-5 and 7-10 as allegedly anticipated under § 102(e) by IPS Group’s earlier patent—King ’054.  King ’054 also lists David William King as an inventor, but does not share the same overall inventive entity as the challenged patent.  To qualify as prior art under pre-AIA § 102(e), a patent must have been filed “by another,” meaning that the inventive entities on the challenged patent and the prior art patent must be different. 

In its patent owner response, IPS Group set forth evidence—in the form of inventor declarations from named inventors on both King ’054 and the challenged patent and in the form of contemporaneous documentation—that Mr. King alone was the inventor of the claimed subject matter of challenged claims 1-5, 7, and 9.  After review of the evidence, the PTAB concluded that IPS Group had met its burden of production and that Mr. King’s contributions to King ’054 could not be used against him with respect to claims 1-5, 7, and 9 of which he was the sole inventor.  The petitioner was unable to successfully rebut this evidence and therefore failed its burden of persuading the PTAB that these claims were anticipated by King ’054.  The PTAB noted, however, that the petitioner did satisfy its burden in showing that the inventive entity of claims 8 and 10 of the challenged patent was a different inventive entity than that of King ’054 and therefore found those claims to be anticipated.  The PTAB recognized the outcome as unusual given that dependent claim 8 was anticipated by the prior art and independent claim 1 was upheld.  Nevertheless, it maintained that the determination was the correct one in view of the record before it.    

This PTAB decision shows the importance of tracking inventor contribution to the disclosure and claims of a patent.  Keeping such records may allow a patent owner to avoid a finding of anticipation under 35 U.S.C. § 102(e), even if the allegedly anticipatory reference lists a different inventive entity than the challenged patent.