Dependent Claims Anticipated, While Independent Claims Were Not

In Duncan Parking Technologies, Inc. v IPS Group, Inc., [IPR2016-00067] (March 27, 2017) the PTAB found that claims 8 and 10 of U.S. Patent No. 7,854,310 were anticipated under 102(e), while claims 1–5, 7, and 9, including the claim 1 from which claim 8 depended and claim 9 from which claim 10 depended were not anticipated.  This peculiar result stemmed from the fact that the cited reference, the King ’054 patent, named King and Schwarz as inventors, while the ‘310 patent named King, Hunter, Hall, and Jones.  Petitioner urged that the King  ‘054 patent was “by another” inventive entity, qualifying it as prior art under §102(e).  The patent owner argued that King was the sole inventor of the subject matter claimed in claims 1–5, 7, and 9 of the the ‘310 patent, and as disclosed in the ‘054 patent, and thus the ‘054 did not represent work “by another” with respect to the subject matter of claims 1–5, 7, and 9.  The PTAB rejected petitioner’s arguments that Schwarz was a co-inventor of the relevant disclosure in King ‘054 or that Jone was a co-inventor of the subject matter in claims 1–5, 7, and 9.

Noting that the touchstone of inventorship is conception, the PTAB concluded that the record as a whole adequately established that King had mentally conceptualized the invention, and athough King engaged a third party to implement various mechanical aspects of the invention, the record conveys that the third party’s role in such implementation was more tantamount to perfection or reduction to practice of King’s conceived invention, rather than amounting to acts of conception with respect to claims 1–5, 7, and 9. The PTAB concluded that such perfection does not negate King’s claim of sole inventorship.

With respect to claims 8 to 10, the PTAB found that the record created a clearer picture that the inventive entity of claims 8 and 10 of the ’310 patent is different than the entity that created the same content of King ’054.

Prior Art that must be Distorted from its Obvious Design does not Anticipate

In re Chudik, [2016-1817] (March 27, 2017), the Federal Circuit reversed the PTAB’s determination that claims 1, 15, 18, and 33–40 of U.S. Patent Application 11/525,631 on an implant for shoulder replacement surgery were anticipated.

The rejected claims required “a shell having a protruding surface on a first side arranged to engage the surface of a cavity formed in a glenoid extending between peripheral glenoid surfaces.  The PTAB affirmed the rejection because claims did not require the recited surfaces engage the specified glenoid regions; rather they require only that the recited surfaces be arranged for such engagement.

A patent claim is invalid for anticipation under 35 U.S.C. § 102 when a prior art reference describes each and every claim limitation and enables one of skill in the art to practice an embodiment of the claimed invention without undue experimentation.  However, a prior art reference that must be distorted from its obvious design does not anticipate a patent claim.


The Board found that because the surfaces of element of the prior art “can still be arranged to” engage the glenoid regions, it anticipated the claims.  However the Federal Circuit rejected this finding, noting that while the claim language could imply that the protruding surface on the flat side need not always actually engage the glenoid cavity surface, it must be at least capable of doing so.  The Federal Circuit found that the prior art ’s protruding surface cannot be arranged to engage the glenoid cavity surface without reconfiguration.  The Federal Circuit said that prior art that “must be distorted from its obvious design” does not anticipate a new invention.

The Federal Circuit reached a similar result with respect to a second reference because this endeavor would constitute a significant and impermissible modification of the prior art.



Invention Must Inevitably Result to be Anticipated by Inherency

In U.S. Water Services, Inc., v. Novozymes A/S, [2015-1950, 2015-1967] (December 15, 2016), the Federal Circuit vacated summary judgment of anticipation, and affirmed the denial of summary judgment of no inequitable conduct.

The patents relate to methods of reducing fouling in fermentation equipment through the use of phytase.  The district court found the claims inherently anticipated.  The Federal Circuit cautioned that inherency may not be established by probabilities or possibilities, and said that the mere fact that a certain thing may result from a given set of circumstances is not sufficient.  The inherent result must inevitably result from the disclosed steps.

While the prior art disclosed the use of phytase in fermentation, the Federal Circuit found that the district court erred in finding no genuine dispute of material fact as to whether the patents-in-suit were inherently anticipated because the prior art discloses the conditions that will necessarily result in phytase reducing deposits.  In particular the district court erred in deeming irrelevant evidence that practicing the prior art will not always result in deposit reduction.  The Federal Circuit found a genuine dispute as to a material fact remained and that, consequently, the district court improperly granted summary judgment on inherent anticipation.

Regarding the denial of Summary Judgment of no inequitable conduct. A party seeking to prove inequitable conduct must
show that the patent applicant made misrepresentations
or omissions material to patentability, that he did sowith the specific intent to mislead or deceive the USPTO, and that deceptive intent was the single most reasonable inference to be drawn from the evidence.  The Federal Circuit found no genuine dispute about this material fact.  The Federal Circuit found that the record contains no suggestion that, but-for the disclosures the examiner would not have issued the patents-in-suit.