When does prior art disclose enough to anticipate a patent? KINGSTON v. SPEX

When does prior art disclose enough to anticipate a patent? KINGSTON v. SPEX

A patent is a set of exclusive rights granted to the inventor of a new, useful and not obvious invention.  To be granted a patent in the United States an inventor must submit a patent application to United States Patent and Trademark Office.  The patent application will be reviewed by an examining attorney at the United States Patent and Trademark Office.  The examining attorney will review the patent application ensure that the invention described in the patent application meets all the criteria for a patented to be granted.  One of the primary jobs that an examining attorney performs is to review prior art.  Prior art is information that has been made available to the public in any form before a given date that might be relevant to a patent’s claims of originality.

Once a patent is granted, the patent is not immune from review.  If a member of the public discovers prior art which would anticipate or render a patented invention obvious, that member of the public can request an inter partes review.  Inter partes review is a trial proceeding conducted at the Patent Trial and Appeal Board (PTAB) to review the patentability of one or more claims in a patent only on a ground that could be raised under §§ 102 or 103, and only on the basis of prior art consisting of patents or printed publications.  The evidence that can be submitted is limited to patents or printed publications which would qualify under §§ 102 or 103 and expert testimony to explain those publications.  At the conclusion of an inter partes review the PTAB may invalidate all, some or none of the claims of the patent.

Because inter partes review will only be granted on very narrow grounds it is important to understand the precise meaning of each ground.  A claim is anticipated only if each and every element of a claim is found, either expressly or inherently described, in a single prior art reference.  Express disclosure means that the prior explicitly mentions the same features claimed in the patent.  Inherit disclosure means that the prior art does not explicitly mention a feature of the invention, but a person familiar with the technology related to the patent would assume the feature is present.   Inherent disclosure occurs only if a feature ‘is “necessarily present,” not merely probably or possibly present, in the prior art.  Extrinsic evidence can be used to demonstrate inherent disclosure.

The concept of inherent disclosure can be tricky to understand so it is useful to study case law to learn how courts apply the law.  KINGSTON TECH. CO. v. SPEX TECHS., INC., 2019-1256 (C.A.F.C. 2019) is a case which evaluates when a piece of prior art discloses enough to anticipate the claims of a patent and render them unpatentable.

The plaintiff in this case petitioned for inter partes review of  U.S. Patent No. 6,003,135.  The patent is titled “Modular Security Device” and relates to a two piece device that connects to a computer.  The security module provides security functionality such as encryption or password control, while the target module provides non-security functionality such as data storage, biometric scanning, a modem, or a smart card reader.  The specification of the ’135 patent explains that some embodiment conform to the PCMCIA standard.

The plaintiff asserted that the ‘135 patent was anticipated by PCT Application WO 95/16238 (Jones).  The Jones patent application discloses a removable data storage memory card secured by a password, encryption, or both.  The Jones invention conforms to the PCMCIA standard.  The PTAB declined to hold claims 55–57 unpatentable.

The PTAB based its decision on the fact the Jones invention “automatically identify” the memory card, while the ‘135 patent “receives request from the host computer” and “provides information”.  The plaintiff appealed to the Court of Appeals for the Federal Circuit.

The Federal Circuit found Jones did not expressly disclose the limitations at issue through its “automatic identification” feature.  Further, Jones does not inherently disclosure the limitations because the PCMCIA standard was not incorporated in Jones and the PCMCIA standard does not necessarily require a memory card to perform those functions when plugged into a computer.  Based on these findings Federal Circuit affirmed the PTAB’s decision.

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