Joint inventors can cause prior art problems. Duncan v. IPS

A patent is a set of exclusive rights granted by a government to the inventor of a new invention. An inventor can apply for a patent in the United States by filing a patent application with the United States Patent and Trademark Office. For a patent application to be granted, the invention described in the patent application must be new, useful and not obvious. Whether a patent is obvious or not depends on prior art. Prior art is the knowledge possessed by a person who is familiar with the technology related to the invention. Others patents and research papers are types of printed publications that can be used as prior art. An invention is considered obvious, and unpatentable, when the prior art discloses the invention or enough of the invention that a person having ordinary skill in the art would consider the invention obvious. When the United States Patent and Trademark Office reviews a patent application, the patent examiner will review as much prior art as practical and determine whether the invention is obvious. If the patent examiner finds prior art that leads the patent examiner to believe the invention is obvious, the inventor will be given an opportunity to explain how their invention is not obvious. If the inventor is able to distinguish their invention from the prior art to the satisfaction of the patent examiner, and the invention meets all the other requirements for a patent, the patent application will be granted. However, even after a patent is granted a third party can still present new prior art in an Inter Partes Review to show that an invention is obvious and unpatentable.

There is a small exception to obviousness that allows prior art created by an inventor from being used against the inventor. A patent is anticipated under 35 U.S.C. § 102(e) if “the invention was described in . . . a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent”.
The statute’s reference to ‘by another’ means that a patent granted to the same inventive entity cannot qualify as § 102(e) prior art.

The question then becomes, what is the same inventive entity? Technology today is complex and frequently the skills of many individuals are needed to turn an idea into a product. Patent law recognizes that many people may contribute to an invention and grants those people joint inventor status on a patent. Joint inventors are considered the same inventive entity. But, when inventors change who they are working with, will their prior patents become prior art?

A case which illustrates how joint inventorship can cause prior art problems is DUNCAN PARKING TECHNOLOGIES, INC., v. IPS GROUP, INC., 2018-1205 (C.A.F.C. 2018). IPS group makes parking meters that accept credit cards for payment. IPS is run by CEO Dave King and Chief Technical Officer Alexander Schwarz. IPS has two patents on parking meters that accept credit cards, U.S. Patents 8,595,054 filed in 2006 issued in 2013 and 7,854,310 filed in 2008, issued in 2010. The ‘054 patent names King and Schwartz as inventors, the ‘310 names King, and three others as inventors. The ’310 and ’054 patents are similar but do not have the same specifications. Duncan makes packing meters that accept credit cards, IPS sued Duncan for infringement of the ‘301 and ‘054 patents. Duncan instituted an Inter Partes Reivew arguing that the ‘054 patent made the ‘301 patent obvious.

IPS defended its patent in the Inter Partes Reivew by saying 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. The Board of Patent Appeals agreed with IPS. Duncan appealed this ruling to the Court of Appeals for the Federal Circuit.

The Federal Circuit held that the ’054 patent anticipates the ’310 patent. The Federal Circuit noted that a patent granted to the same inventive entity cannot qualify as § 102(e) prior art. However, because the named inventors on the two patents were different, the inventions were created by different inventive entities.

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