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:
- determine what portions of the reference patent were relied on as prior art to anticipate the claim limitations at issue,
- evaluate the degree to which those portions were conceived ‘by another,’ and
- 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.
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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).”).