Federal Circuit Affirms Prior Art Was Not Reference “By Another”

stick figure chasing another The Federal Circuit has affirmed a ruling by the Patent Trial and Appeals Board (PTAB) that a prior art reference was not “by another” under the terms of (pre-AIA) 35 U.S.C. § 102(e). Under 35 U.S. Code § 102, “novelty” is a condition for patentability. The current version of the law reads:
(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; or (2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
There are exceptions for disclosures made less than one year before the effective filing date of the claimed invention.
The pre-AIA version of the statute stated that a person is entitled to a patent unless: (e) the invention was described in — (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language;
(Emphasis added.) In LSI Corp. v. Regents of the University of Minnesota, The Regents of the University of Minnesota (UMN) sued LSI Corporation and Avago Technologies U.S. Inc. (LSI) for alleged infringement of US Patent No. 5,859,601. As the court noted,
The ’601 patent addresses error rates related to recording data to computer storage devices. Some input data sequences contain “error-prone binary data patterns.” … Dr. Jaekyun Moon, a UMN professor at the time, and Dr. Barrett J. Brickner, a UMN graduate student at the time, developed maximum transitionrun (“MTR”) coding to reduce these error-prone patterns, and their work became the basis for the ’601 patent.
LSI petitioned the PTAB for inter partes review of the ’601 patent, and the Board instituted review on three claims of the patent based on the claim that they were anticipated by two prior-art references, U.S. Patent Nos. 5,392,270 (“Okada”) and 5,731,768 (“Tsang”). The court affirmed that the Tsang reference was not prior art because it was not “by another” under (pre-AIA) 35 U.S.C. § 102(e). The court noted that determining whether a reference is “by another” involves three steps:
[T]he Board must (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.
A disclosure in the Tsang patent had previously been disclosed in a document called the Seagate Annual Report. But because the subject matter in the Tsang patent relied upon by LSI was the same as was found in the Seagate Annual Report by the named inventors of the '601 patent, the Board held the Tsang patent was not “by another.”
Categories: Patents