Ex parte King

Decision Date01 September 2021
Docket NumberAppeal 2021-002695,Application 16/403,060
PartiesEx parte DAVID WILLIAM KING, MURRAY DAVID KIRBY, MATTHEW JAMES HALL, DAVID ANDREW JONES, and ALEXANDER SCHWARZ Patent 7, 854, 310 B2 Technology Center 3900
CourtPatent Trial and Appeal Board

Ex parte DAVID WILLIAM KING, MURRAY DAVID KIRBY, MATTHEW JAMES HALL, DAVID ANDREW JONES, and ALEXANDER SCHWARZ Patent 7, 854, 310 B2 Technology Center 3900

Appeal 2021-002695

Application 16/403, 060

United States Patent and Trademark Office, Patent Trial and Appeal Board

September 1, 2021


FILING DATE: 05/03/2019

Before RAE LYNN P. GUEST, MICHELLE R. OSINSKI, and CYNTHIA L. MURPHY, Administrative Patent Judges.

DECISION ON APPEAL

OSINSKI, ADMINISTRATIVE PATENT JUDGE.

STATEMENT OF THE CASE

Appellant[1] appeals from the Examiner's decision rejecting claims 1-11. A telephonic oral hearing was held on May 11, 2021 [2] We have jurisdiction over the appeal under 35 U.S.C. §§ 6(b) and 134.

We AFFIRM.

BACKGROUND

The application on appeal (Reissue Application) seeks a broadened reissue of U.S. Patent 7, 854, 310 B2 (Issued Patent) which matured from U.S. Patent Application 12/072, 524 (Patent Application). The Patent Application named David William King, Murray David Kirby Hunter, Matthew James Hall, and David Andrew Jones as inventors. Application Data Sheet (Feb. 27, 2008). These same inventors were listed on the front page of the Issued Patent. Claims 1-11, issued in the Issued Patent (Issued Claims), matured from claims 1-9 initially filed with the Patent Application (As-Filed Claims), with claim 1 in the Patent Application being the sole independent claim at the time of filing. Claim Listing (Feb. 27, 2008). As-Filed Claim 1 is reproduced below.

1. A parking meter including:

a coin sensor
a card reader
an electronic device electrically connected to the sensor and reader so as to receive information electronically therefrom a display to provide information visually, a telephone connection to provide receiving information in respect of a card used in respect of said card reader, and connections for at least one rechargeable battery to power the reader, sensor and device; and
a solar cell operatively associated with said connections to charge said battery
a body having;
a front face having a coin slot into which coins are inserted for delivery to the sensor and then the coin storage facility;
a card slot into which a card is inserted to be read by said reader, and a rear face providing a window via which said solar cell is exposed to light, and providing visual access to said display.

Id.

In response to a Non-Final Office Action issued July 31, 2009, Appellant amended the claims to include additional details regarding the housing in which the coin sensor, card reader, and electronic device were located, as well as a limitation indicating that "the coin sensor and the card reader are electrically linked to provide information to the electronic device to provide information of whether payment has been made." Amendment and Interview Summary (Nov. 2, 2009), 3-4 (emphasis omitted). A Notice of Allowance was issued March 22, 2010. Following two Requests for Continued Examination in which Appellant included additional Information Disclosure Statements and requested that the cited references be made of record (Requests for Continued Examination (May 10, 2010) and (Sept. 8, 2010)), a final Notice of Allowance was issued October 27, 2010.

The Issued Claims include independent claims 1 and 9. Issued Patent 3:46-4:13, 4:36-5:8. The Issued Claims also include claims 2-8 depending directly or indirectly from independent claim 1, as well as claims 10 and 11 depending directly from independent claim 9. Id. at 4:14-35, 5:8-6:8. Independent Issued Claim 1 recites language substantially similar to the as-filed claim language that the parking meter includes "an electronic device electrically connected to the sensor and reader so as to receive information electronically therefrom, the electronic device having . . . connections for at least one rechargeable battery to power the reader, sensor, and device." Id. at 3:49-56. Independent Issued Claim 9 recites identical language to the as-filed claim language that the parking meter includes

an electronic device electrically connected to the sensor and the reader so as to receive information electronically therefrom, the electronic device comprising ... a rechargeable battery electrically coupled to provide power to the reader, the sensor, and the electronic device, and ... a solar cell operatively coupled with the rechargeable battery to charge the rechargeable batter[y].

Id. at 4:52-67.

A

Petition to institute an inter partes review of claims 1-5 and 7-10 of the Issued Patent was filed, and the Board instituted trial as to claims 1-5 and 7-10 on the sole basis of determining whether those claims were unpatentable under 35 U.S.C. § 102 as anticipated by U.S. Patent No. 8, 595, 054 B2, issued November 26, 2013 ("the '054 Patent"). Final Written Decision, Case IPR2016-00067, Paper 29 (Mar. 27, 2017), 2 (hereinafter the "Final Written Decision" or "Final Dec."). The Final Written Decision noted that "the central issue to be resolved by this panel is whether [the '054 Patent] constitutes prior art to the [Issued Patent] under 35 U.S.C. § 102." Id. at 6. The '054 Patent names David William King and Alexander Schwarz as inventors. Id. at 7. Thus, on its face, the '054 Patent is "by another" with respect to the Issued Patent for purposes of the application of 35 U.S.C. § 102(e). Id.

In the Final Written Decision, the Board found the record to support that Mr. King was the sole inventor of the subject matter of Issued Claims 1 and 9 relating to "the general recitation ... of connections and operative associations of components" and found that this is "what Mr. King broadly envisioned on his own." Final Dec. 10. More particularly, the Board found that "although Mr. Schwartz may have developed the particular block diagram of Figure 8 [in the '054 Patent], the record suggests that Mr. King was aware that components of the parking meter that he envisioned generally would be connected to, and operable with, one another." Id. at 9-10 (citing Ex. 2032 ¶¶ 13-17; Ex. 2033 ¶ 9 ("[Mr. King] alone identified the components themselves that would be included in the parking meter described in the '054 [P]atent, as well as the high-level idea that they would need to be connected in a functional way."). Because the Board also found that "the record at hand simply provides little reason to disbelieve that Mr. King was the sole inventor of the applied portions of King '054" (id. at 11), the Board determined that "Mr. King's own contributions to [the '054 Patent] are not available as prior art under 35 U.S.C. § 102(e) with respect to claims 1-5, 7, and 9 of the [Issued Patent] in which Mr. King is the sole inventor." Id. at 14.

With respect to dependent claims 8 and 10, the Board determined that the inventive entity named on the face of the Issued Patent (David William King, Murray David Kirby Hunter, Matthew James Hall, and David Andrew Jones) was appropriate and was not disputed by the parties, such that "[t]he inventive entity of claims 8 and 10 of the [Issued Patent] is unquestionably different than the inventive entity of all portions of [the '054 Patent]." Final Dec. 15-16. Because the '054 Patent "is clearly 'by another' when it comes to claims 8 and 10," the Board determined that on the current record, "claims 8 and 10 are considered appropriately as unpatentable under 35 U.S.C. § 102(e)." Id. at 16.

Following a Rehearing Request from Appellant (IPS Group Rehearing Request 37 C.F.R. § 42.71(d)(2), Case IPR2016-00067, Paper 31 (Apr. 26, 2017) (hereinafter the "Rehearing Request" or "Reh'g Req.")), the Board vacated that portion of the Final Written Decision pertaining to claims 8 and 10 and presented new analysis. Decision Granting Patent Owner's Request for Rehearing and Modifying the Prior Final Written Decision 35 U.S.C. § 318(a) and 37 C.F.R. § 42.71, Case IPR2016-00067, Paper 37 (Aug. 18, 2017), 7-8 (hereinafter the "Rehearing Decision" or "Reh'g Dec"). To that end, the Board found that

[t]he present record conveys that the subject matter of claims 8 and 10 of the [Issued Patent] that appears in [the '054 Patent], and was applied against those claims, is the invention of Mr. King and the D+I inventors (i.e. the named inventors of the [Issued Patent]) and is, thus, not 'by another' as is required to constitute prior art that bars patentability under 35 U.S.C. § 102(e).

Id. at 7. The Board "change[d] [its] conclusion in the Final Written Decision (Paper 29) that [the '054 Patent] is anticipatory prior art to claims 8 and 10 of the [Issued Patent]." Id. The Board based its decision on it being "undisputed that Mr. King and the D+I inventors invented the substantive content that became claims 8 and 10 of the [Issued Patent]" and that "Mr. King communicated the pertinent inventive content of the [Issued Patent] (i.e. that which was applied as allegedly anticipatory of claims 8 and 10 of the [Issued Patent]) to the inventive entity of [the '054 Patent]." Id. at 6.

The Petitioner in IPR2016-00067 appealed to the Federal Circuit, and the Federal Circuit reversed the Board's decision that claims 1-5 and 7-10 of the Issued Patent are not unpatentable as anticipated. Duncan Parking Techs., Inc. v. IPS Grp., Inc., 914 F.3d 1347, 1351 (Fed. Cir. 2019). The Federal Circuit indicated it "must review . . . whether the Board erred in concluding that the applied portions of the '054 patent were invented by King alone and not by King and Schwarz jointly" and concluded that "the Board erred in not holding that King and Schwarz are joint inventors of the anticipating disclosure [of the '054 Patent]." Id. at 1357-58. In particular, the Federal Circuit found that "[i]t is clear that Schwarz conceived much of the '054 patent's electrical system, including designing the diagram showing how all the electronic components are connected." Id. at 1359. The Federal Circuit further found that "[a]s a result...

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