IPS Group Inc.Download PDFPatent Trials and Appeals BoardSep 1, 20212021002695 (P.T.A.B. Sep. 1, 2021) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 16/403,060 05/03/2019 David William KING 42178-710.998 1352 21971 7590 09/01/2021 WILSON SONSINI GOODRICH & ROSATI 650 PAGE MILL ROAD PALO ALTO, CA 94304-1050 EXAMINER DOERRLER, WILLIAM CHARLES ART UNIT PAPER NUMBER 3993 NOTIFICATION DATE DELIVERY MODE 09/01/2021 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): patentdocket@wsgr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DAVID WILLIAM KING, MURRAY DAVID KIRBY, MATTHEW JAMES HALL, DAVID ANDREW JONES, and ALEXANDER SCHWARZ ____________ Appeal 2021-002695 Application 16/403,060 Patent 7,854,310 B2 Technology Center 3900 ____________ Before RAE LYNN P. GUEST, MICHELLE R. OSINSKI, and CYNTHIA L. MURPHY, Administrative Patent Judges. OSINSKI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 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. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as IPS Group, Inc. Appeal Br. 3. 2 The record includes a transcript of the oral hearing (“Tr.”). Appeal 2021-002695 Application 16/403,060 Patent 7,854,310 B2 2 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. Appeal 2021-002695 Application 16/403,060 Patent 7,854,310 B2 3 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 Appeal 2021-002695 Application 16/403,060 Patent 7,854,310 B2 4 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 Appeal 2021-002695 Application 16/403,060 Patent 7,854,310 B2 5 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 Appeal 2021-002695 Application 16/403,060 Patent 7,854,310 B2 6 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, Appeal 2021-002695 Application 16/403,060 Patent 7,854,310 B2 7 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 of Schwarz’s contribution, the ’054 patent discloses a parking meter device with a detailed electrical system, a challenge King described as one of ‘two big hurdles’ to the invention” and “[t]hus, Schwarz’s contribution, measured against the dimension of the full invention, was significant.” Id. The Federal Circuit concluded that “the anticipating embodiment [of the ’054 Patent] was the joint invention of King and Schwarz, an inventive entity different from that of the [Issued Patent], and the ’054 patent is prior art under 35 U.S.C. § 102(e).” Id. The Federal Circuit then held that claims 1–5 and 7–10 of the Issued Patent were unpatentable as anticipated. Id. The Federal Circuit, thus, agreed with Petitioner’s assertion that “Schwarz is a joint inventor of the relevant portions of the ’054 [P]atent because he conceived the electrical system depicted in Figure 8.” Duncan, 914 F.3d at 1357. The Court pointed to Petitioner’s reliance on “the ’054 [P]atent’s disclosure of a specific parking meter device, depicted in the figures and described in detail in the specification.” Id. at 1358 (citing the ’054 Patent 3:9–10, 4:15–34). The Court noted that Petitioner “relies on Figure 8, a block diagram depicting the embodiment’s electrical system, as anticipatory prior art ‘by another’ disclosing the electrical connections and components claimed in the [Issued Patent].” Id. The Court stated that “Figure 8 discloses each of the electrical components claimed in the [Issued Patent], along with a detailed diagram showing how each component is Appeal 2021-002695 Application 16/403,060 Patent 7,854,310 B2 8 connected.” Id. Significantly, the Court also noted that “the ’054 [P]atent’s parking meter device, its sole embodiment, contains the specific electrical system disclosed in Figure 8.” Id. at 1359. Appellant filed a Request for Panel Rehearing and Rehearing En Banc on March 4, 2019 (hereinafter “Request”), arguing, inter alia, that the Federal Circuit’s outright reversal and finding of anticipation was contrary to 35 U.S.C. § 256 which, according to Appellant, “expressly provides for prospective correction once an error in inventorship has been identified.” Request 14 (March 4, 2019). Appellant’s Request for Panel Rehearing and Rehearing En Banc was denied. Duncan Parking Techs., Inc. v. IPS Group, Inc., 2018-1205 (April 29, 2019). Appellant filed this Reissue Application on May 3, 2019. A conference call was held with the Board on May 7, 2019, in which Appellant “requested [the] call to explain [its] intention with the reissue application” in which Appellant “determined that the appropriate course of action is to correct inventorship on the [Issued Patent] to add Schwarz as an inventor” with such correction being “consistent with the Federal Circuit’s decision” and “lead[ing] to the logical result that the ’054 [P]atent cannot anticipate the claims because King and Schwarz are the co-inventors of the overlapping subject matter.” Record of Telephonic Proceedings, IPR2016- 00067, Ex. 2048, 7–8 (May 9, 2019) (hereinafter “Transcript” or “Tr.”). Appellant noted that “if the Board is not inclined to take action to correct inventorship, it need not do anything. The reissue application will proceed in the appropriate channel, and ultimately we expect Schwarz will be added as an inventor.” Id. at 9. The Board also advised Appellant that the issuance Appeal 2021-002695 Application 16/403,060 Patent 7,854,310 B2 9 of the mandate in light of the Federal Circuit decision would result in issuance of the certificate of cancellation in due course. Id. at 14–15. An Inter Partes Review Trial Certificate was issued on November 12, 2019 in which Issued Claims 1–5 and 7–10 were cancelled. Notably, Issued Claims 6 and 11 of the Issued Patent were not cancelled. The Reissue Application contains claims 1–11 (Reissue Claims). Reissue Claims 1 and 9 are independent. Claims 2–8 depend directly or indirectly from independent claim 1, and claims 10 and 11 depend directly from independent claim 9. Reissue Claims 1–11 are identical to the Issued Claims 1–11. Reissue 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, the electronic device having a screen 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; a solar cell operatively associated with said connections to charge said battery; a housing in which the coin sensor, card reader, and electronic device are located, the housing comprising an intermediate panel set and a cover panel, wherein the cover panel is movably attached to the intermediate panel set, and a surface of the cover panel and a surface of the intermediate panel set comprise a front face, and the front face surface of the cover panel includes a control panel having a window and a plurality of buttons that operate the parking meter upon manipulation by a user; a coin slot in the front face slot into which coins are inserted for delivery to the sensor and then to a coin receptacle; Appeal 2021-002695 Application 16/403,060 Patent 7,854,310 B2 10 a card slot in the front face into which a card is inserted to be read by said reader; a rear face comprising a surface of the cover panel and a surface of the intermediate panel set providing a window aperture via which said solar cell is exposed to light; wherein 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; wherein the screen of the electronic device is visible through the window of the control panel when the cover panel is attached to the intermediate panel. REJECTIONS I. The Examiner rejects Reissue Claims 1–11 as being contrary to 37 C.F.R. § 42.73(d)(3)(i). Final Act. 2–3. II. The Examiner rejects Reissue Claims 1–5 and 7–10 on the grounds of res judicata. Id. at 4. ANALYSIS Rejection I Claims 1–5 and 7–10 The Examiner reproduces 37 C.F.R. 42.73(d)(3)(i), which states that “[a] patent applicant or owner is precluded from taking [action] inconsistent with the adverse judgment, including obtaining in any patent: . . . [a] claim that is not patentably distinct from a finally refused or cancelled claim.” Final Act. 2. The Examiner notes that Federal Circuit held Issued Claims 1–5 and 7–10 of the Issued Patent unpatentable and anticipated by the ’054 Patent. Id. at 3. The Examiner asserts that Appellant “is now attempting to reinstate the identical claims that were cancelled by the Board due to an adverse judgment after the public has been put on notice that these Appeal 2021-002695 Application 16/403,060 Patent 7,854,310 B2 11 claims [are] not enforceable.” Id. In other words, the Examiner takes the position that “the final judgement of the Board in the IPR was the cancelation of claims 1–5 and 7–10 and any action on these claims by the [E]xaminer is seen as contrary to this judgment.” Id. at 5. Appellant frames the issue in the prior proceedings as “the ’054 [P]atent contain[ing] a figure—a version of which had been prepared by Schwarz—that depicted both the higher-level electrical connections conceived by King alone (and recited in the [Issued Patent]) and the lower- level electronics to which Schwarz had contributed” with “the relevant aspect of that figure for anticipation purposes [being only] King’s own idea that had been communicated to Schwarz post-conception.” Appeal Br. 10. Appellant’s contention in the prior proceedings was that “the relevant portion of the ’054 [P]atent was the ’310 inventors’ own work, which was not available as prior art under 102(e).” Id. The Federal Circuit disagreed that the relevant portion of the ’054 Patent was only the ’310 inventors’ own work, finding instead that the applied portions of the ’054 Patent were invented by King and Schwarz jointly. Id. at 10–11 (citing Duncan, 914 F.3d at 1359). Appellant now contends that the Federal Circuit’s determination that “Schwarz’s contribution to the development of the low-level electronics rendered him an inventor of the subject matter described in the ’054 [P]atent and in the broader recitation of the electronics” also means that Schwarz should be considered an inventor of the Issued Claims of the Issued Patent. Appeal Br. 10–11. According to Appellant, because Schwarz was not listed as an inventor on the face of the Issued Patent, the Federal Circuit found the Appeal 2021-002695 Application 16/403,060 Patent 7,854,310 B2 12 ’054 Patent to be prior art “‘by another’ under §[ ]102(e) and therefore anticipatory.” Id. at 11. Appellant argues that “[b]ecause Schwarz was first determined to be an inventor of the subject matter in the [Issued Patent] on appeal, [Appellant] had neither reason nor opportunity to correct inventorship earlier.” Id. Appellant urges that it is entitled to correct the inventorship of the Issued Patent through this reissue application to include Schwarz as a named inventor. Appeal Br. 11. Appellant argues that “under 35 U.S.C. §[ ]256, claims cannot be invalidated due to incorrect inventorship . . . without providing an opportunity to correct.” Id. Appellant’s Reissue Declaration indicates that Appellant believes the original patent to be wholly or partly inoperative or invalid “by reason of the patentee claiming more or less than he had the right to claim in the patent.” Reissue Application Declaration by the Assignee (May 3, 2019), 1. Appellant asserts that “‘[c]laiming more or less than he had a right to claim in the patent’ under §[ ]251 includes incorrect inventorship.” Appeal Br. 12 (citing Ex parte Scudder, 169 USPQ 814, 815 (BPAI 1971) (finding “that the reference in Section 251 to ‘claiming more or less than he had a right to claim in the patent’ cannot be restricted to the patentability of the claims over the prior art but must also be interpreted to cover a situation where it is discovered that one of several joint inventors is the sole inventor of some of the claimed subject matter in a patent issued to joint inventors” because “[i]n this case the joint inventors would be claiming more than they had right to by asserting that they were the inventors of the subject matter which was invented by only one of them and vice versa”); see also MPEP § 1402(II) (“[I]f applicant chooses to file a Appeal 2021-002695 Application 16/403,060 Patent 7,854,310 B2 13 reissue application to correct the inventorship (as opposed to choosing the certificate of correction route), applicant may do so because misjoinder of inventors is an error that is correctable by reissue under 35 U.S.C. [§] 251.”). In this case where there is no real dispute about who invented higher- level electrical connections (King alone) and who invented lower-level electronics (King and Schwarz), the issue does not necessarily appear to be one of inventorship, but rather the scope of the Issued Claims of the Issued Patent and the appropriateness of finding Schwarz to be an inventor of the anticipating disclosure in the ’054 Patent. The Federal Circuit found the sole embodiment of the ’054 Patent to contain the specific electrical system disclosed in Figure 8, and thus, found Schwarz (who developed Figure 8) to be a joint inventor of the anticipating embodiment of the ’054 Patent. The Federal Circuit references the “electrical system limitations” of Issued Claims 1 and 9 of the Issued Patent (Duncan, 914 F.3d at 1358) and states that Issued Claims 1 and 9 of the Issued Patent “clearly include elements previously disclosed in Figure 8” (id. at 1358–59). The Federal Circuit’s holding more precisely relates to the inventorship of the ’054 Patent and whether the sole embodiment of the ’054 Patent anticipates Issued Claims 1–5 and 7–10 of the Issued Patent. We do not view the Federal Circuit decision as necessarily mandating that Schwarz be added as an inventor to the Issued Patent or necessarily making a determination of the inventorship of the Issued Patent. Considering that the Issued Patent does not include Figure 8 illustrating the components of the parking meter device, there is a question of the breadth of the Issued Claims in the Issued Patents that is relevant, not necessarily that the record at the Federal Circuit Appeal 2021-002695 Application 16/403,060 Patent 7,854,310 B2 14 establishes definitively that there was an error in inventorship that Appellant must be allowed to correct pursuant to 35 U.S.C. §§ 251, 256. Indeed, when 35 U.S.C. § 256 was raised to the Federal Circuit in Appellant’s Request for Rehearing, the Federal Circuit was not compelled to revise its finding of anticipation, and Appellant’s Request for Rehearing was denied. Appellant argues that the Examiner’s insistence that Rule 42.73(d)(3) precludes the Examiner from allowing Appellant to pursue a reissuance of claims 1–11 with correct inventorship is improper because it is suggesting that a regulation overrides the statutory requirement of reissuance under 35 U.S.C. §§ 251, 256. Appeal Br. 15. Appellant points out that the U.S. Patent and Trademark Office has “explained that the final rule was intended to be consistent with ‘other statutory provisions’ and ‘common law related to estoppel.’” Id. at 16 (quoting Rules of Practice for Trials Before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions, 77 Fed. Reg. 48612, 48649 (Aug. 4, 2012) (hereinafter the “PTAB Rules of Practice”) (citing, inter alia, In re Deckler, 977 F.2d 1449, 1452 (Fed. Cir. 1992)). More particularly, Appellant argues that the Examiner’s position is contrary to the “other statutory provisions” of 35 U.S.C. §§ 251, 256 which require reissuance where claims are deemed invalid due to an incorrect inventorship. Id. As described above, it is not clear from the Federal Circuit decision that Issued Claims 1–5 and 7–10 were deemed invalid due to incorrect inventorship or due to (i) the scope of the Issued Claims, (ii) the sole embodiment of the ’054 Patent being anticipatory, and (iii) the appropriateness of finding Mr. Schwarz to be a joint inventor of the sole embodiment of the ’054 Patent. Appeal 2021-002695 Application 16/403,060 Patent 7,854,310 B2 15 Appellant also argues that the Examiner’s position is contrary to common law estoppel and res judicata in that “[t]he patentability of the instant claims with corrected inventorship was not and could not have been addressed in the IPR, since the Board declined to exercise jurisdiction of the reissue application.” Appeal Br. 16. The Federal Circuit clearly “reverse[d] the Board’s decision and h[e]ld claims 1–5 and 7–10 of the [Issued Patent] unpatentable as anticipated by the ’054 [P]atent.” Duncan, 914 F.3d at 1365. At that point, the Federal Circuit mandate dictated the next steps with respect to the Issued Patent, and it would not have been appropriate for the Board to have assumed jurisdiction to take further action in the proceeding in light of the reversal of the Board’s decision and the holding of the claims of the Issued Patent as unpatentable. Moreover, issues relating to the scope of the Issued Claims of the Issued Patent, the extent of disclosure relating to the embodiment of the ’054 Patent held to be anticipatory, and the appropriateness of finding Mr. Schwarz to be a joint inventor of the embodiment of the ’054 Patent were briefed in full and finally decided by the Federal Circuit. See Request (March 4, 2019), 1–17; Duncan Parking Techs., Inc. v. IPS Group, Inc., 2018-1205 (April 29, 2019). Appellant argues that “seeking reissuance of claims 1–11 with the now-corrected inventorship is not ‘inconsistent with the adverse judgment’ in IPR2016-00067.” Appeal Br. 15. Appellant acknowledges that the pursuit of claims not patentably distinct from a finally refused or cancelled claim may be inconsistent with the adverse judgment “if the previous basis of invalidity still applies to the reissue claims.” Id. Appellant argues, however, that the previous basis of invalidity (i.e., the ’054 Patent being Appeal 2021-002695 Application 16/403,060 Patent 7,854,310 B2 16 treated as a patent “by another” and thus anticipatory under 35 U.S.C. § 102(e) with respect to claims 1–5 and 7–10 in the Issued Patent because of the omission of Schwarz as an inventor on the Issued Patent) would not be applicable with respect to the Reissue Claims where Schwarz is properly listed as an inventor in the reissue application. Id. The PTAB Rules of Practice provide that Rule “§ 42.73(d)(3) set forth in this final rule is consistent with the AIA, other statutory provisions, the common law related to estoppel, and the common law related to the recapture rule.” PTAB Rules of Practice, 77 Fed. Reg. at 48649. In response to comments “suggest[ing] that the Office should examine the claim on the merits in the subsequent proceeding, rather than applying the patent owner estoppel,” the Rules provide that “[t]he Office will examine a claim presented in a subsequent proceeding on the merits and apply the estoppel if the claim is not patentably distinct from the finally refused or cancelled claim similar to a ground of rejection based on res judicata (see, e.g., MPEP § 706.03(w)).[3]” Id. MPEP § 2190, in its discussion regarding res judicata, states that “[a] patent owner or applicant may be precluded from seeking a claim that is not patentably distinct from a claim that was finally refused or canceled during an administrative trial or federal court proceeding under the doctrine of res judicata.” MPEP § 2190(II). Here, the Federal Circuit reversed the Board’s decision and held Issued Claims 1–5 and 7–10 of the Issued Patent unpatentable as anticipated 3 MPEP § 706.03(w) indicates via an Editor Note that “[i]nformation pertaining to rejections based on res judicata has been moved to MPEP § 2190, subsection II” (italics omitted). Manual of Patent Examining Procedure (MPEP), Ninth Edition, Rev. Oct. 2019, last Rev. June 2020. Appeal 2021-002695 Application 16/403,060 Patent 7,854,310 B2 17 by the ’054 Patent. Reissue Claims 1–5 and 7–10 are identical to Issued Claims 1–5 and 7–10 that were held to be unpatentable.4 Obtaining identical claims to those held by the Federal Circuit to be unpatentable and for which an Inter Partes Review Trial Certificate was issued to cancel those claims is inconsistent with the adverse judgment. The issue of the patentability of Reissue Claims 1–5 and 7–10 in light of the anticipating embodiment of the ’054 Patent is identical to the issue decided by the Federal Circuit—the patentability of Issued Claims 1–5 and 7–10 in light of the anticipating embodiment of the ’054 Patent—when considering the identical nature of the Reissue Claims to the Issued Claims. Moreover, issues relating to the breadth of the Issued Claims of the Issued Patent, the extent of disclosure 4 We note that introducing Reissue Claims 1–5 and 7–10 with the same numbering as cancelled Issued Claims 1–5 and 7–10 is confusing and procedurally improper. A Reissue Application must contain the entire specification, including the claims of an Issued Patent. 37 C.F.R. § 1.173(a). The Reissue Application must include the entire text of each claim being changed and each claim being added. 37 C.F.R. § 1.173(b)(2). “Patent claims may not be renumbered,” and “[t]he numbering of any claim added in the reissue application must follow the number of the highest numbered patent claim.” 37 C.F.R. § 1.173(e). Because Issued Claims 6 and 11 have not been cancelled, they remain in the Issued Patent and their numbering should be preserved. However, because Issued Claims 1–5 and 7–10 have been cancelled, they no longer exist in the Issued Patent and cannot, thus, be amended in the reissue application. Any reintroduction of the subject matter of cancelled claims should be considered to be part of claims being added in the Reissue Application. Accordingly, their numbering should follow the order of the highest numbered patent claim (i.e., claim 11). Accordingly, the added Reissue Claims 1–5 and 7–10 should instead begin with Reissue Claim 12. Even if properly numbered Reissue Claims were introduced in this case, we are not persuaded of error by the Examiner in rejecting Reissue Claims 1–5 and 7–10 based on the additional analysis herein. Appeal 2021-002695 Application 16/403,060 Patent 7,854,310 B2 18 relating to the embodiment of the ’054 Patent held to be anticipatory, and the appropriateness of finding Mr. Schwarz to be a joint inventor of the anticipatory embodiment of the ’054 Patent were all issues Appellant had the opportunity to address in the proceedings before the Board and the Federal Circuit. Moreover, the interest in the public being able to rely on the cancellation of claims in an inter partes proceeding as set forth in the patent’s public record is another reason in support of interpreting Rule 42.73(d)(3)(i) in such a manner that any attempt to obtain a claim that is not patentably distinct from a cancelled claim is inconsistent with the adverse judgment. See Final Act. 3 (“[Appellant] is now attempting to reinstate the identical claims that were cancelled by the Board due to an adverse judgement after the public has been put on notice that these claims are not enforceable.”); Ans. 4 (“[T]he cancelation of claims 1–5 and 7–10 by the Board put the public on notice that these claims are now in the public domain.”) Cf. Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1384 (Fed. Cir. 1998) (in interpreting 35 U.S.C. § 253, the court stating that “[t]he public is entitled to rely upon the public record of a patent in determining the scope of the patent’s claims. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583, 39 USPQ2d 1573, 1577 (Fed.Cir.1996). This reliance enables businesses, as well as others, to plan their future conduct in as certain an environment as possible. See id.”). Appellant is taking action inconsistent with the adverse judgement of the Federal Circuit which held Issued Claims 1–5 and 7–10 as unpatentable as anticipated by the ’054 Patent, thereby resulting in the cancellation of Appeal 2021-002695 Application 16/403,060 Patent 7,854,310 B2 19 Issued Claims 1–5 and 7–10, by seeking to obtain Reissue Claims 1–5 and 7–10 that are identical, and therefore, not patentably distinct, to the cancelled Issued Claims. Consequently, the pursuit of Reissue Claims 1–5 and 7–10 is contrary to Rule 42.73(d)(3)(i). Dependent Claims 6 and 11 As to Reissue Claims 6 and 11, the Examiner takes the position that although these claims were not cancelled, the claims are not patentably distinct from those claims that were cancelled. Final Act. 3. The Examiner states that Reissue Claims 6 and 11 are directed to a coin validator unit that is removably attached to the parking meter module. Id. The Examiner finds that U.S. Patent No. 5,027,390 to Hughes (issued June 25, 1991) teaches “a ‘conventional’ coin operated device with a coin slot 14 and a ‘removable coin validator mechanism 24’” and concludes that it would have been obvious to one of ordinary skill in the art to add a removable coin validator in order “to enable proper determination of the time allotted from the money paid, while also affording easy replacement of the validator.” Id. at 3–4 (citing Hughes 1:27). In particular, the Examiner states that “the showing of the structure of the dependent claims [6 and 11] as ‘conventional’ by Hughes renders these claims unpatentable as obvious modifications of claims 5 and 9, respectively” because “[o]bvious modifications are not seen as patentably distinct, and are therefore still seen as barred under Rule 42.73(d)(3).” Id. at 5. Appellant argues that the Examiner’s “conclusory explanation [as to the structure of the dependent claims being conventional, with the subject matter of the dependent claims being obvious modifications of the cancelled Appeal 2021-002695 Application 16/403,060 Patent 7,854,310 B2 20 claims] does not address claim 6 or 11 as a whole, explain how Hughes allegedly satisfies the additional limitations of claims 6 or 11, explain how a [person of ordinary skill in the art] allegedly would have achieved the proposed modification, provide a reasoned explanation of the alleged benefits, or even allege a reasonable expectation of success.” Appeal Br. 18; see also Reply Br. 3. In other words, Appellant argues that “even if a rejection of original, unchallenged claims 6 and 11 under Rule 42.73(d)(3) based on obviousness were appropriate—and the Office Action provides no legal basis for doing so—the rejections fail to present the basic requirements of a prima facie case.” Appeal Br. 18. The Examiner responds by pointing to its original rejection as providing an adequate explanation of how Hughes satisfies the additional limitations, as well as “a reasoned explanation of the alleged benefit”—namely, “the addition of the coin validator to enable proper determination of the time allotted from the money paid, while also affording easy replacement of the validator.” Ans. 4. Appellant does not respond with sufficient particularity to the articulated position of the Examiner so as to persuade us that the Examiner’s explanation of obviousness as to the subject matter of dependent Reissue Claims 6 and 11 relative to the subject matter of cancelled Issued Claims 5 and 9 is inadequately supported. To the extent Appellant is suggesting that the Office Action provides no legal basis for rejecting claims 6 and 11 under Rule 42.73(d)(3), the Examiner has explicitly taken the position that a reissue claim directed to an obvious modification of a cancelled issued claim is a reissue claim that is not patentably distinct from a cancelled issued claim under Rule 42.73(d)(3)(i). Appeal 2021-002695 Application 16/403,060 Patent 7,854,310 B2 21 Final Act. 5 (“Obvious modifications are not seen as patentably distinct, and are therefore still seen as barred under Rule 42.73(d)(3).”). We are not persuaded that such an interpretation of “not patentably distinct” by the Examiner under Rule 42.73(d)(3) is in error. Appellant also argues that Appellant “explained that correction of inventorship removed the primary reference used in the proposed combination from the prior art.” Reply Br. 3. Even to the extent that correction of inventorship may remove the ’054 Patent such that it does not constitute § 102(e) prior art, the rejection of claims 6 and 11 is based on the subject matter of claims 6 and 11 being not patentably distinct over cancelled Issued Claims 5 and 9, respectively, not over the ’054 Patent that caused the cancellation of cancelled Issued Claims 5 and 9. As described hereinabove, the Federal Circuit held Issued Claims 5 and 9 as unpatentable as anticipated by the ’054 Patent and, thus, cancelled Issued Claims 5 and 9. Appellant is taking action inconsistent with the adverse judgement of the Federal Circuit by seeking to obtain Reissue Claims 6 and 11 that are not patentably distinct relative to the cancelled Issued Claims 5 and 9 as described hereinabove. Consequently, the pursuit of Reissue Claims 6 and 11 is contrary to Rule 42.73(d)(3)(i). Rejection II The Examiner also rejects claims 1–5 and 7–10 on the grounds of res judicata because these claims were found unpatentable by the Federal Circuit and subsequently cancelled by the Patent Trial and Appeal Board due to anticipation by the ’054 Patent. Final Act. 4. The Examiner states that according to MPEP § 706.03(w), “[r]es judicata may constitute a proper Appeal 2021-002695 Application 16/403,060 Patent 7,854,310 B2 22 ground for rejection . . . when the earlier decision was a decision of the Patent Trial and Appeal Board . . . or any one of the reviewing courts and when there is no opportunity for further court review of the earlier decision.” Id. The Examiner takes the position that “[a]s these claims have been canceled by the Board, further action on them by the Office is seen as improper.” Id.; see also id. at 6 (“MPEP [§] 706.03(w) states, ‘A patent owner or applicant is precluded from seeking a claim that is not patentably distinct from a claim that was finally refused or canceled during an administrative trial.’ In this instance the claims are not patentably distinct, as they are identical to the claimed canceled by the Board in light of the Court decision. The [E]xaminer has no authority to act on claims canceled by the Board.”); Ans. 4 (“[T]he cancelation of claims 1–5 and 7–10 by the Board put the public on notice that these claims are now in the public domain. The [E]xaminer cannot overrule the Board. If the rejection would change due to the addition of the new inventor, it would do so to a claim that has already been rejected by the Courts and canceled by the Board.”). Appellant argues “common law estoppel and res judicata merely prevent ‘relitigation of claims or issues that were or could have been raised in that proceeding.’” Appeal Br. 16 (italics added) (quoting Deckler, 977 F.2d at 1452) (emphasis and citations omitted). Appellant asserts that it “had neither reason nor opportunity to correct inventorship earlier” because, until the issuance of the Federal Circuit decision, it had not considered Schwarz to be required to be a named inventor. Id. at 11; see also id. at 19 (“Because the improper inventorship was only established on appeal at the Federal Circuit, [Appellant] never had reason[,] much less opportunity[,] to Appeal 2021-002695 Application 16/403,060 Patent 7,854,310 B2 23 correct inventorship during trial.”). More specifically, Appellant argues that “[r]es judicata only applies where (1) the ‘identical’ issue was (2) ‘actually litigated,’ (3) was a critical and necessary part of that judgment, and (4) the party had a full and fair opportunity to litigate the issue.” Id. at 19 (citing Voter Verified, Inc. v. Election Sys. & Software LLC, 887 F.3d 1376, 1382 (Fed. Cir. 2018), cert. denied, 139 S. Ct. 813 (2019). Appellant argues that although “the patentability of the [Issued Claims] without Schwarz listed as an inventor was addressed in the IPR, the patentability of these claims with Schwarz listed was not,” and that “[t]hese issues are distinct, and the latter issue was never litigated before the Board or the Federal Circuit, nor did [Appellant] have any opportunity to do so.” Id. (boldface omitted) (citing In re Herr, 377 F.2d 610, 611 (CCPA 1967) and Egenera, Inc. v. Cisco Sys., Inc., 972 F.3d 1367, 1376–78 (Fed. Cir. 2020) (correction allowed after court reached legal conclusion impacting inventorship, noting difficulty of determining inventorship for “complex projects involving many contributors at various times”)). Appellant asserts that “the Board indicated its understanding that the patent would reissue with corrected inventorship in due course despite the subsequent cancellation of the [Issued Claims].” Id. at 19–20 (citing Tr. 14–15) (emphasis omitted). The Examiner invokes res judicata to prevent re-litigating the issue of the patentability of claims 1–5 and 7–10, found by the Patent Trial and Appeal Board and Federal Circuit to be unpatentable due to anticipation by the ’054 Patent. Final Act. 4. Appeal 2021-002695 Application 16/403,060 Patent 7,854,310 B2 24 Under the doctrine of issue preclusion, also called collateral estoppel,[5] a judgment on the merits in a first suit precludes relitigation in a second suit of issues actually litigated and determined in the first suit. Issue preclusion, as distinguished from claim preclusion, does not include any requirement that the claim (or cause of action) in the first and second suits be the same. Rather, application of issue preclusion centers around whether an issue of law or fact has been previously litigated. The underlying rationale of the doctrine of issue preclusion is that a party who has litigated an issue and lost should be bound by that decision and cannot demand that the issue be decided over again. In re Freeman, 30 F.3d 1459, 1465 (Fed. Cir. 1994) (citations omitted). The Supreme Court has explained that “[t]o preclude parties from contesting matters that they have had a full and fair opportunity to litigate protects their adversaries from the expense and vexation attending multiple lawsuits, conserves judicial resources, and fosters reliance on judicial action by minimizing the possibility of inconsistent decisions.” Montana v. United States, 440 U.S. 147, 153–54 (1979). Issue preclusion is appropriate if the following conditions are met: (1) the issue is identical to one decided in the first action; (2) the issue was actually litigated in the first action; (3) resolution of the issue was essential to a final judgment in the first action; and (4) the party against whom estoppel is invoked had a full and fair opportunity to litigate the issue in the first action. Innovad Inc. v. Microsoft Corp., 260 F.3d 1326, 1334 (Fed. Cir. 2001). 5 “In older case law, courts sometime spoke of res judicata in contrast to collateral estoppel. However, because res judicata can also be used in the sense of any preclusion of litigation arising from a judgment, including collateral estoppel, . . . courts . . . for clarity have substituted the terms ‘claim preclusion’ and ‘issue preclusion.’” Foster v. Hallco Mfg. Co., 947 F.2d 469, 478 (Fed. Cir. 1991). Appeal 2021-002695 Application 16/403,060 Patent 7,854,310 B2 25 As described above in connection with Rejection 1, Appellant is seeking to re-litigate the issue of the patentability of Reissue Claims 1–5 and 7–10 in light of the anticipating embodiment of the ’054 Patent that is identical to the issue decided by the Federal Circuit—the patentability of Issued Claims 1–5 and 7–10 in light of the anticipating embodiment of the ’054 Patent—when considering the identical nature of the Reissue Claims to the Issued Claims. Moreover, we are not persuaded that Appellant lacked a full and fair opportunity to litigate the issue of the patentability of Reissue Claims 1–5 and 7–10 in light of the anticipating embodiment of the ’054 Patent. Appellant had the opportunity in the proceedings before the Board and the Federal Circuit to address the breadth of the Issued Claims of the Issued Patent, the extent of disclosure relating to the embodiment of the ’054 Patent held to be anticipatory, and the appropriateness of finding Mr. Schwarz to be a joint inventor of the anticipatory embodiment of the ’054 Patent, which were all relevant to the underlying issue of the patentability of Issued Claims 1–5 and 7–10 in light of the anticipating embodiment of the ’054 Patent. As to any alleged position taken by the Board in the conference call to which the Transcript pertains, we are not persuaded that the Board took any position on the correction of inventorship. Rather, the Board merely “decline[d] to exercise any jurisdiction we have to take exclusive jurisdiction of the reissue application that’s at issue here” (Tr. 13:14–19) and determined that no “further action needs to occur . . . in that . . . the certificate of cancellation [i.e., a Trial Certificate] will happen in due course.” Tr. 18:3–7. Appeal 2021-002695 Application 16/403,060 Patent 7,854,310 B2 26 For the foregoing reasons, we are not persuaded that the application of res judicata by the Examiner to prevent re-litigating the issue of the patentability of Reissue Claims 1–5 and 7–10, and consequently, preventing Appellant from pursuing Reissue Claims 1–5 and 7–10 in this reissue application, is in error. Therefore, we are not persuaded that the Examiner erred in applying res judicata in connection with Reissue Claims 1–5 and 7–10. CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–11 Contrary to 37 C.F.R. § 42.73(d)(3)(i) 1–11 1–5, 7–10 Res Judicata 1–5, 7–10 Overall Outcome 1–11 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation