PTAB Grants Rare Request For Rehearing And Modifies Final Written Decision

In an August 18, 2017, decision, the Patent Trial and Appeal Board (PTAB or the "Board") granted a patent owner's request for rehearing and modified a previously issued Final Written Decision to hold that the petitioner failed to show that any of the challenged claims were unpatentable.

In its petition, Duncan Parking Technologies (DPT) argued that Claims 1-5 and 7-10 of U.S. Patent No. 7,854,310 ("King '310") were anticipated by an earlier patent with partially overlapping inventors, U.S. Patent No. 8,595,054 ("King '054"). The Board issued a Final Written Decision holding that DPT had not carried its burden to show that Claims 1-5, 7 and 9 of King '310 were anticipated by King '054, but that DPT had established that Claims 8 and 10 of King '310 were unpatentable. In reaching different conclusions regarding these claims, the Board looked to the inventorship of the claims at issue: the parties agreed that all named inventors of King '310 contributed to Claims 8 and 10, whereas Claims 1-5, 7 and 9 were attributed to the work of inventor David King alone. The portions of King '054 asserted to anticipate claims 1-5, 7 and 9 were also attributed to Mr. King alone, but there was a dispute as to the inventorship of the portions of King '054 applied against Claims 8 and 10.

In the Final Written Decision, the Board held that, because named inventor Mr. King's own work was asserted to anticipate Claims 1-5, 7, and 9 of King '310, earlier work was not "by another" and thus did not constitute prior art to those claims under 35 U.S.C. § 102(e). Conversely, the Board concluded that, because other named inventors had contributed to the King '054 disclosures asserted to anticipate Claims 8 and 10, that work was "by another" and therefore constituted anticipatory prior art with respect to those claims.

In its motion for rehearing, patent owner IPS Group argued that that the Board overlooked its argument concerning the inventorship of the subject...

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