PATENT CASE OF THE WEEK
Duncan Parking Techs., Inc. v. IPS Group, Inc. and IPS Group, Inc. v. Duncan Solutions, Inc. et al., Appeal Nos. 2018-1205, -1360 (Fed. Cir. January 31, 2019)
The Court this week provided a lengthy discussion and analysis concerning who qualifies as “another” inventor of an invention under pre-AIA Section 102(e). The Court also provided further guidance on the doctrine of “vitiation” as an exception to the doctrine of equivalents.
“Another” Inventor
Petitioner Duncan Parking Techs. (“DPT”) appealed from an inter partes review decision of the Patent Trial and Appeal Board (“PTAB”) holding that certain claims of IPS Group’s (“IPS”) U.S. Patent No. 7,854,310 (“the ’310 patent”) were not shown to be unpatentable as anticipated under pre-AIA 35 U.S.C. § 102(e).
The inter partes review concerned whether the ’310 patent was anticipated by IPS’s Patent No. 8,595,054 (“the ’054 patent”) under pre-AIA 35 U.S.C. § 102(e). The two patents are technically unrelated patents directed to similar parking meter technology. While the ’054 patent issued from an application filed more than one year prior to the filing of the ’310 application, both named as an inventor IPS’s founder and CEO Dave King. (The ’054 patent additionally listed IPS’s Chief Technical Officer Alexander Schwartz as an inventor, while the ’310 patent listed several engineers from an outside design firm.) IPS did not dispute anticipation on the merits, but instead argued that the anticipating portions of the ’054 patent were solely the invention of King, and not that of “another” as required by § 102(e). (Petitioner had argued that Schwartz conceived at least a portion of the anticipating disclosure.) PTAB had agreed with IPS, being “skeptical that the general recitation… of connections and operative associations of components constitutes more than what Mr. King broadly envisioned.”
The Federal Circuit reversed, finding that PTAB committed clear error in finding that Schwartz was not a joint inventor of the anticipating portions of the ’054 patent, rendering it a disclosure “by another” for purposes of § 102(e). The Court articulated that whether a reference patent is “by another” for § 102(e) purposes required PTAB to “(1) determine what portions of the reference patent were relied on as prior art…, (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.” Applying this standard, the Court found that Schwartz was a joint inventor of the anticipating disclosure, having contributed significantly to conceiving details of the ’054 device’s electrical system, beyond King’s broad initial idea.
“Vitiation” Doctrine Is Alive and Well
In the same opinion, the Court also addressed appeals from two related district court decisions granting summary judgment of non-infringement of the ’310 patent and the ’054 patent. The Court affirmed the district court’s judgment of non-infringement of the ’310 patent, which implicated claims not challenged in the IPR. While the ’310 patent claimed a “plurality of buttons” that were part of the meter housing, the accused device’s keyboard was a part of the internal mechanism that protruded through an opening in the housing, and so did not literally infringe. The Court also rejected IPS’s argument under the doctrine of equivalents, finding that it would vitiate claim limitations expressly describing the “plurality of buttons” as being part of the housing, which the patent otherwise repeatedly distinguished from the device itself. In recent decisions, the Federal Circuit has rejected numerous attempts to apply the vitiation doctrine, following its decision in Deere & Co. v. Bush Hog, LLC, 703 F. 3d 1349 (Fed. Cir. 2012). This is a rare decision where the doctrine was successfully invoked, and the Court offered a discussion of precedent and policy rationales supporting its decision.
The Court also vacated and remanded the district court’s judgment of non-infringement of the ’054 patent, finding that the district court erred in construing the limitation “receivable within” to require the device to fit “entirely” within the claimed housing. As such, the protrusion of the accused device’s keypad through an opening in the housing—which was found not to be an equivalent to the ’310 claims—was nonetheless not sufficient to avoid infringement of the earlier patent.
The opinion can be found here.
ALSO THIS WEEK
Mylan Pharmaceuticals Inc. v. Research Corporation Technologies, Inc., Appeal Nos. 2017-2088, -2089, -2091 (Fed. Cir. Feb. 1, 2019)
In an appeal of a final written decision in an inter partes review, the Federal Circuit affirmed the USPTO’s decision that a patent relating to the anti-epileptic drug Vimpat was not unpatentable. In particular, the Court agreed with the Board’s conclusion that the Petitioner had failed to show that the relevant claims would have been obvious at the time of the invention.
The opinion can be found here.
