The Inventive Entity and Prior Publication by Another

by Dennis Crouch

Here is the setup in the Federal Circuit’s recent decision in Google LLC v. IPA Techs. Inc. (Fed. Cir. 2022):

  • March 23, 1998. Cheyer, Martin, and Moran co-author academic paper describing their Open Agent Architecture (“OAA”) project being developed at Stanford’s SRI International.
  • January 5 & March 17, 1999. Cheyer & Martin (but not Moran) file for patent protection on aspects of the OAA that were not fully disclosed within the original publication.

And the Question: Does the prior publication count as prior art in an IPR obviousness analysis?

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After IPA sued Google for infringement, Google petitioned for inter partes review (IPR).  Although the Board granted the petition, it eventually concluded that the prior publication was not prior art and thus sided with the patentee in its final written decision. On appeal, the Federal Circuit has vacated and remanded–asking for further fact finding on the contribution of Moran.

IPR proceedings are limited to challenges anticipation and obviousness challenges and only those based upon prior patents & printed publications.  Prior art used for  an obviousness rejection must first qualify as prior art under Section 102.  Since the patents here are pre-AIA, we focus on the old Sections 102(a) and 102(b):

Pre-AIA 102. A person shall be entitled to a patent unless —

(a) the invention was … patented or described in a printed publication … before the invention thereof by the applicant for patent, or

(b) the invention was patented or described in a printed publication … more than one year prior to the date of the application for patent in the United States, or

We can quickly eliminate the 102(b) time-bar because the patent applications at issue here were filed within the one-year grace period.  102(a) prior art asks whether the IPA invention was already the subject of a printed publication prior by the time the IPA inventors created their invention.  In the obviousness context, we break this down a bit further and ask whether some aspect of the invention was disclosed in a printed publication prior to the applicant’s invention date.

Courts also added a “by another” limitation into this portion of Section 102(a).  Thus, a prior publication by inventors (or a subset of the inventors) does not count as prior art under 102(a).  In re Katz, 687 F.2d 450 (CCPA 1982).

In IPA’s case, the problem is that the prior publication was by the inventors and an additional third party. If the third-party contributed fully to the publication then it counts as prior art.  But, the courts have recognized that listing of authors operates by a different norm than listing of inventors and so delve into whether or not the additional author actually contributed to the particular disclosure being relied upon.  In the context of pre-AIA 102(e) (that expressly included the “by another” provision), the Federal Circuit provided a three step process:

  1. determine what portions of the reference patent were relied on as prior art to anticipate the claim limitations at issue,
  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.

Duncan Parking Techs., Inc. v. IPS Grp., Inc., 914 F.3d 1347 (Fed. Cir. 2019).

In IPA, the Board concluded that Google had failed to show Moran had participated in the conception of the relevant portions.  On appeal, the Federal Circuit vacated the ruling — concluding that the Board had failed to “complete the full Duncan analysis” but rather disregarded testimony from Dr. Moran regarding his contribution as lacking corroboration.  On appeal, the Federal Circuit concluded that the original co-authorship represents “significant corroborating evidence.”  On remand, the court will need to actually consider the testimony and decide the factual questions of Moran’s contribution to the prior publication.

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Note – the case has a few other interesting and important procedural aspects that I’m not covering in this post.

= = =

Under the AIA: Section 102 was substantially rewritten in the Leahy-Smith America Invents Act of 2011.  The revised provisions no longer consider the date-of-invention as relevant.   If the patents were being considered under the AIA, we would  still first look to Section 102(a) and find that the prior publication seemingly qualifies since the publication occurred prior to the applicant’s effective filing date:

Post-AIA. (a) Novelty; Prior Art.—A person shall be entitled to a patent unless— (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.

We should not expect courts to read-in the “by another” limitation into this new Section 102(a), which is more properly thought of as a modification of the pre-AIA bar of 102(b) (despite its reference to “novelty”).   Thus, any publication prior to the effective filing date qualifies for consideration under Section 102(a).  But, prior art consideration under the AIA always require consideration of the exceptions found under Section 102(b).  Importantly, prior disclosures via the inventors within 1-year of the effective filing date are excluded from prior art consideration.

Post-AIA. 102(b) Exceptions.— (1) Disclosures made 1 year or less before the effective filing date of the claimed invention.—

A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—

(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

The new statute does not provide any direct guidance as to how courts will treat  pre-filing disclosures akin to the one in IPA where the authors include both the listed inventors and also non-inventors.   On the one hand, the court could continue to require the same Duncan Parking analysis where we delve into the details of who conceived of the various aspects of the pre-filing disclosure. On the other hand, the court could simply whether an inventor is one of the listed authors — if so, the disclosure “was made by the inventor or joint inventor.”

The USPTO appears to largely be applying the Duncan Parking approach — its  examination guidance particularly focuses attention upon whether the 102(b)(1) disclosure is made solely by the listed inventors (or a subset).  See also Ex Parte Chowdhury, APPEAL 2020-006272, 2021 WL 4306675 (Patent Tr. & App. Bd. Sept. 20, 2021) (prior publication by a subset of inventors qualifies as a 102(b)(1) exception); and MPEP 2153.01(a) (“If … the application names fewer joint inventors than a publication (e.g., the application names as joint inventors A and B, and the publication names as authors A, B and C), it would not be readily apparent from the publication that it is by the inventor (i.e., the inventive entity) or a joint inventor and the publication would be treated as prior art under AIA 35 U.S.C. 102(a)(1).”).

 

 

15 thoughts on “The Inventive Entity and Prior Publication by Another

  1. 4

    Has anyone recently dealt with this in practice? It seems that the quoted portion of MPEP 2153.01(a) simply requires that an examiner issue a rejection because the inventorship issue is not clear on its face. Presumably, one could then overcome the rejection with an affidavit under CFR 1.130.

  2. 3

    Great article but I am not sure this statement is correct:

    Courts also added a “by another” limitation into this portion of Section 102(a). Thus, a prior publication by inventors (or a subset of the inventors) does not count as prior art under 102(a). In re Katz, 687 F.2d 450 (CCPA 1982).

    In other words, a “subset of the inventors” is still “by another.”

    See MPEP 2136.04, link to mpep.uspto.gov:

    I. IF THERE IS ANY DIFFERENCE IN THE INVENTIVE ENTITY, THE REFERENCE IS “BY ANOTHER”
    “Another” means other than applicants, In re Land, 368 F.2d 866, 151 USPQ 621 (CCPA 1966), in other words, a different inventive entity. The inventive entity is different if not all inventors are the same. The fact that the application and reference have one or more inventors in common is immaterial. Ex parte DesOrmeaux, 25 USPQ2d 2040 (Bd. Pat. App. & Inter. 1992) (The examiner made a pre-AIA 35 U.S.C. 102(e) rejection based on an issued U.S. patent to three inventors. The rejected application was a continuation-in-part of the issued parent with an extra inventor. The Board found that the patent was “by another” and thus could be used in a pre-AIA 35 U.S.C. 102(e) /103 rejection of the application.).

  3. 2

    In my experience, there have been times when a first partner in a joint venture (official or unofficial) has filed for patent applications without the knowledge of the second partner who only learned about the patent applications when prosecution counsel working for the first partner contacted the inventers working for the second partner and asked for them to sign inventor declarations so they could file the applications. In other times, a vendor’s client took the vendor’s proposal for manufacturing a particular component and filed a provisional patent application listing as inventors people who worked for the vendor’s client’s and two individuals working for the vendor who prepared the proposal – all without the knowledge of the vendor until it became time to convert the provisionals into non-provisionals. Those are just two examples. Now throw in disclosures at same or different trade shows by one or the other of the parties, and things get complicated.

    1. 2.1

      Things can get really complicated especially when in a mixed group, not all of the inventors work for a single corporation, and the practitioners actual client is the corporation rather than any of the individuals.

      I had a case a long time ago in which one of these non-corporate named inventors actually turned rogue, left the country, and tried to prosecute the application himself directly. Found out when the examiner reached out rather upset that the inventor had called in relation to an office action and had cussed out the examiner in the most unprofessional tones.

      (and before anyone gets their panties in a bunch – responding on this forum is decidedly different than responding to the patent office – See 37 cfr 1.3)

      1. 2.1.1

        You don’t think we should abide by the Spirit of 1.3 on this forum?

        1. 2.1.1.1

          No, I do not.

          IF (and that’s a mighty big if) others would not engage in mindless propaganda and clearly – and honestly — engage on the merits, fully committing to a dialogue and answer points out to them THEN I would fully embrace 1.3.

          As it is, this has never been the case, so the more appropriate tactics include (and must include) much more of the John Maynard Keynes (words ought to be a little sharp, as they are an assault on the unthinking).

          1. 2.1.1.1.1

            “others would not engage in mindless propaganda and clearly ”

            Like the folks who attack others are being anti-patent or radical leftists or Marxists, etc., etc., etc.

            My advice is that it would be better to follow the spirit of 37 CFR 1.3 than to risk the extremely remote possibility, one day at an AIPLA convention or other IP Bar event, you find yourself getting dragged into a backroom and getting a beat down by a masked group of IP professionals who know your real identity.

            LOL! As if that sort of thing would ever happen. No, it is more like whenever your name comes up as a potential speaker, someone else on the planning committee will say that you’re a notorious obnoxious jerk and no one wants to hear anything that comes out of your mouth.

            I’ve been on a few CLE planning committees and I’ve seen enough of the latter. Reputations do matter and the IP community is not so large that a reputation does not precede the person. Better to be known as a respectful and courteous professional with decorum than an obnoxious, self-important jerk.

            A roving gang of masked IP professionals giving beatdowns. LOL. As if.

            1. 2.1.1.1.1.1

              Like the folks who attack others are being anti-patent or radical leftists or Marxists, etc., etc., etc.

              No – an absolutely horrid example — seeing as I have made such “attacks” AND backed it up with links to an expert in the field.

              you find yourself getting dragged into a backroom and getting a beat down by a masked group of IP professionals who know your real identity.

              That (thinly) veiled threat proves opposite the point that you want to so desperately make.

              Here’s a better idea — follow MY first indications and engage — intellectually honestly and on point.

              Then pay attention as to WHY JMK is appropriate.

      2. 2.1.2

        Yeah, I’ve had similar. Person X working for person Y, parts company and secretly files a spec. Y discovers, take it thru court and rights are assigned to person Y, and we luck out the case was still pending to enable inventorship change w/o hassle of reissue. Maybe somebody will poll Sr. patent lawyers for neat anecdotes and publish a short tome. But who would want to read it ?

  4. 1

    Thanks Dennis for an excellent legal review of prior art questions re prior publications listing more authors than there are inventors on their less than a year latter applications. This is increasingly likely with increasingly R&D being done by universities for corporations rather than by corporations themselves.
    Another but related aspect, of course, would be the potential difficulties or joint ownership consequences of adding inventor names on the patent application or patent.

    1. 1.1

      ? How would adding present comparable issues?

      (no snark intended)

      1. 1.1.1

        if the patent is assigned to A but you add an inventor that works for B, the patent could be jointly owned by A&B. So, adding people as inventors potentially complicates ownership.

        1. 1.1.1.1

          OK – I thought it might be something comparable.

      2. 1.1.2

        Examples of possible difficulties with adding inventors to previously filed applications might be objections of some of the originally named inventors [denial the added person was a joint inventor] that have to be tactfully handled, and/or the adding or deleting of dependent claims during prosecution deliberately or unintentionally changing proper inventorship designations. Even if not appreciated as a potential problem until the patent is litigated.

        1. 1.1.2.1

          So if I read you correctly Paul, this may generate into a squabble of who actually did what, and who deserves credit for any eventual claims.

          Certainly then, during prosecution, as is often the case that claim amendments are made, egos may clash and any sense of right attributions (and subsequent impacts of those attributions) may very well be in flux.

          I would posit this as affecting not only dependent claims as you note, but just as easily the independent claims.

          This does remind me of not one but two corollary issues in patent prosecution.

          1) Oaths and Decs.

          It should be clear that with amendments that very well could remove (and add) different inventors based on amended claims, and noting that inventorship is on a claim by claim basis, a final point list of inventor oaths and declarations may not look anything at all like a “as-filed” inventor oaths and declarations.

          Our standard practice is to garner all possible oaths and declarations for the as filed item – even those whose contributions did not make it into the as-filed claims. In this manner, we need not revisit during prosecution if names drop in and drop out, based in substantial part to the No New Matter rule. On occasion, out client will provide an updated list of an ADS to remove names that ended up not making the final cut of the allowed claims. In these cases – for which a continuation is pursued, we reset to the full list.

          2) claims (as they end up and the relation to provisional applications).
          Now I know that you have struggled with the legal effect of provisional applications, and how those applications intersect with non-provisional applications, but the bottom line here — and quite connected to the issue that you brought up — is that it is the claims of the non-provisional that dictate the effect of the provisional. Yes, a change in claims can not only impact various inventors and their rights, but along the same line of reasoning affect the very nature of the non-provisional itself.

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