Duncan Parking Technologies v. IPS Group, Inc. (No. 2018-1205, -1360, 1/31/19) (Lourie, Dyk, Taranto)
Lourie, J. The Court considered a consolidated appeal of two district court cases involving two similar patents—U.S. Patents 8,595,054 (“the ’054 patent”) and 7,854,310 (“the ’310 patent”)—and a related Inter Partes Review (“IPR”) challenging the ’310 patent. The patents relate to a credit-card enabled, solar-powered, single-space parking meter. With respect to the district court decisions, the Court affirmed a summary judgment of no infringement of the ’310 patent but vacated a summary judgment of no infringement of the ’054 patent based on claim construction. With respect to the IPR, the Court reversed the PTAB’s decision and held that the challenged claims of the ’310 patent were anticipated by the earlier ’054 patent under 35 U.S.C. § 102(e). The named inventor on the ’310 patent was Dave King and the named inventors on the ’054 patent were King and his co-inventor Alexander Schwarz. The Court explained that because the earlier ’054 patent was developed jointly by King and Schwartz, and not King alone, the ’054 patent was anticipatory prior art to the ’310 patent under § 102(e).
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