The Court of Appeal of the United States holds that a patent applicant or owner can overcome anticipation by establishing that the relevant disclosure in the prior-art reference describes their own invention
LSI Corporation and Avago Technologies v Regents of the University of Minnesota
Court of Appeal of the United States
Dyk, Reyna & Hughes, JJA
August 11, 2022
Reported by Faith Wanjiku and Bonface Nyamweya
Intellectual Property law- Intellectual property rights-patents- patentability and unpatentability- conditions for patentability and unpatentability- where the respondent had sued the petitioners for infringement of US Patent No. 5,859,601 (601 patent) in the District of Minnesota- where the 1st petitioner petitioned the Patent Trial and Appeal Board (the board) for inter partes review of the 601 patent, and the board instituted review on claims 13, 14, and 17 on anticipation theories based on two prior-art references, US Patent Nos. 5,392,270 (Okada) and 5,731,768 (Tsang)-where the 1st petitioner failed to show unpatentability of claims 14 and 17 in relation to the two patents- where the board held that the 1st petitioner failed to timely raise its theory that tables 8 and 9 of Okada anticipated claims 14 and 17 and that, in any event, tables 8 and 9 did not anticipate- what was anticipation in relation to patents- whether reference to an earlier invention by another person to come up with a new invention amounted to anticipation- what were the steps in establishing whether a reference to an earlier invention by another person to come up with a new invention amounted to anticipation- 35 USC § 102(e).
The respondent had sued the petitioners for infringement of US Patent No. 5,859,601 (601 patent) in the District of Minnesota. The 1st petitioner petitioned the Patent Trial and Appeal Board (the board) for inter partes review of the 601 patent, and the board instituted review on claims 13, 14, and 17 on anticipation theories based on two prior-art references, US Patent Nos. 5,392,270 (Okada) and 5,731,768 (Tsang). The board concluded that claim 13 was unpatentable in view of Okada and that claims 14 and 17 were not shown to be unpatentable in view of either reference.
The 601 patent addressed error rates related to recording data to computer storage devices. Some input data sequences contained error-prone binary data patterns. Dr. Jaekyun Moon, a professor at the respondent’s university at the time, and Dr. Barrett J. Brickner, a graduate student from the respondent university at the time, developed maximum transition-run coding to reduce those error-prone patterns, and their work became the basis for the 601 patent. The maximum transition-run coding as described in the 601 patent involved receiving sequences of input data blocks with error-prone patterns and converting (i.e., encoding) each input data block into a corresponding codeword that avoided the error-prone patterns. Dr. Moon and Dr. Brickner understood that the number of consecutive bit transitions in the input data sequence, i.e., binary bit transitions from 0 to 1 or 1 to 0, was an important source of error. Thus, maximum transition-run coding as described in the 601 patent converted input data blocks into codewords that imposed a limit on the maximum number of consecutive transitions that were written to a computer storage device and imposed a limit on the maximum number of non-transitions.
In finding that the 1st petitioner failed to show unpatentability of claims 14 and 17, the board held that the 1st petitioner failed to timely raise its theory that tables 8 and 9 of Okada anticipated claims 14 and 17 and that, in any event, tables 8 and 9 did not anticipate. As to Tsang, the board held that the reference was not prior art because it was not by another under 35 USC § 102(e), hence the 1st petitioner appealed the board’s decision as to claims 14 and 17.
- What was anticipation in relation to patents?
- Whether reference to an earlier invention by another person to come up with a new invention amounted to anticipation.
- What were the steps in establishing whether a reference to an earlier invention by another person to come up with a new invention amounted to anticipation?
Relevant provisions of law
35 USC § 102(e)
A person shall be 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.
- Okada taught converting input data blocks using two rules that eliminated the occurrence of certain patterns in the input data blocks for use with optical disks. Okada’s rule 1 provided that a pattern after conversion consisted of at least one 0 and an even number of consecutive 1. Okada’s rule 2 provided that a pattern after conversion included a section consisting of 01010 and a section consisting of at least one 0 or an even number of consecutive 1. Okada’s tables 1–9 included an example mapping of all 8-bit input data blocks to 13-bit converted output data blocks based on Okada’s two rules. The 1st petitioner originally contended that Okada’s disclosure of rule 2 itself anticipated claims 14 and 17 of the 601 patent, but later argued instead that tables 8 and 9 were embodiments that anticipated claims 14 and 17.
- The 1st petitioner’s second theory of anticipation relied on Tsang, and particularly those portions of Tsang disclosed earlier in what was known as the Seagate Annual Report. Some background on the 601 patent was necessary to understand the Tsang anticipation theory. On September 26, 1995, Dr. Moon and Dr. Brickner submitted the Seagate Annual Report about maximum transition-run coding to Seagate, an industry collaborator on their research. The material in the Seagate AnnualReport was later embodied in the 601 patent. It was not clear whether the Seagate Annual Report was publicly available before the 601 patent’s priority date.
- In both the Seagate Annual Report and the 601 patent, Dr. Moon and Dr. Brickner described maximum transition-run coding that took an input sequence of binary data and encoded or converted it in a way that eliminated error-prone patterns of consecutive bit transitions before saving or storing the encoded sequence in a computer storage device. The maximum transition-run coding as described in both the 601 patent and the Seagate Annual Report included the two limitations on consecutive bit transitions and non-transitions. To accomplish the encoding and achieve the two limitations on transitions and non-transitions, the 601 patent and the Seagate Annual Report described a fixed-length block code that mapped every 4-bit input data block to a unique 5-bit codeword. The maximum transition-run coding that mapped 4-bit input data blocks to 5-bit codewords was a rate 4/5 code.
- There was no contention that the Seagate Annual Report could be relied upon as prior art to the 601 patent since Dr. Moon and Dr. Brickner were both listed as the only authors of the Seagate Annual Report and as the only inventors of the 601 patent. Because the Seagate Annual Report had the same authors, it was not by another person under § 102 even if it were publicly available before the priority date. Rather, the 1st petitioner relied on another prior-art patent, Tsang, to anticipate claims 14 and 17.
- About four months after receiving the Seagate Annual Report from Dr. Moon and Dr. Brickner and before the earliest filing date of the 601 patent (April 5, 1996), Dr. Kinhing P Tsang, an employee at Seagate, filed an application on January 31, 1996, that would later mature into the Tsang patent. Dr. Moon and Dr. Brickner were not listedas inventors on the Tsang patent. Under § 102(e), the Tsang patent was prior art on its face to the 601 patent because Dr. Tsang was the only listed inventor on the patent and was not a listed inventor on the 601 patent. The Tsang patent described the maximum transition-run coding as previously existing in the background section of the patent and directly referenced the Seagate Annual Report.
- Based on the description of maximum transition-run coding by Dr. Moon and Dr. Brickner in the Seagate Annual Report, Tsang revised the maximum transition-run coding to create a specific codeword strategy that selected the codeword for a given dataword depending on the previous dataword-codeword mapping, an invention not disclosed or specifically claimed in the 601 patent. That type of system was known as a state-dependent system, and it allowed Tsang to implement maximum transition-run coding with higher input-output rates, which allowed for more efficient use of storage. For example, Tsang described and claimed an implementation with 6-bit input data blocks and 7-bit output codewords, i.e., a 6/7 rate, instead of the 4/5 rate described in the Seagate Annual Report and the 601 patent. Dr. Tsang described a specific implementation that built on maximum transition-run coding that limited consecutive transitions and non-transitions as described by Dr. Moon and Dr. Brickner in the Seagate Annual Report.
- The 1st petitioner did not challenge the board’s determination that the 1st petitioner’s argument about Okada’s tables 8 and 9 was improper as untimely. At oral argument, the 1st petitioner indeed admitted that it did not appeal the board’s untimeliness determination. However, the 1st petitioner argued that it was not necessary to challenge the board’s untimeliness determination because the board nevertheless reached the merits.
- The court affirmed the board’s conclusion of untimeliness because the 1st petitioner forfeited any challenge to the untimeliness holding by failing to challenge it in its opening brief on appeal, and the board’s timeliness holding constituted an independent ground for its decision.
- A claimed invention was anticipated if the invention was described in an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent. A patent applicant or owner could overcome anticipation under § 102(e) by establishing that the relevant disclosure in the prior-art reference described their own invention, i.e., that it was not by another person.
- Determining whether a reference was by another person involved three steps whereby the board had to:
- 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 was significant enough, when measured against the full anticipating disclosure, to render him a joint inventor of the applied portions of the reference patent.
- The 1st petitioner argued that it relied on Tsang to establish anticipation (and not the Seagate Annual Report), thus satisfying the first prong of the Duncan Parking Techs, Inc v IPS Group, Inc, 914 F3d 1347, 1357 (Fed Cir 2019) (Duncan Parking) test, and that since (allegedly) Tsang was a species of the genus described in the 601 patent, it anticipated claims 14 and 17. The 1st petitioner misunderstood the relevant test. The question was whether the invention of Tsang was relied upon and relevant to anticipation, or whether it was simply Tsang’s summary of the earlier Seagate Annual Report that was relied upon and relevant to anticipation. Tsang’s summary of, and reliance on, the earlier work of Dr. Moon and Dr. Brickner did not make Tsang an inventor of the earlier work.
- The portions of the reference being considered had to be relied upon and relevant to establishing obviousness. Otherwise, a partychallenging a patent could artificially alter the inventive entity for comparison by citing extraneous portions of a multi-inventor prior art reference, thereby making it by others even if the portions of the reference necessary for establishing obviousness had the same inventive entity as the challenged patent.
- The petition relied both on portions of Tsang that summarized the Seagate Annual Report and on additional portions of Tsang that were not merely derivative of the Seagate Annual Report—portions describing Tsang’s specific invention. But those additional portions of Tsang were not relevant to anticipation. The board properly concluded that the two Tsang embodiments, which included the specific 5/6 and 6/7 rates that were different from the 4/5 rate disclosed by Dr. Moon and Dr. Brickner in the Seagate Annual Report, were not relevant to the scope of the challenged claims because Tsang’s 5/6 and 6/7 maximum transition-run rates did not refer to the values of constraints j and k, which imposed limits on the number of consecutive transitions and non-transitions in the challenged claims.
- Tsang’s 5/6 and 6/7 rates addressed characteristics that were not limited by the challenged claims and were not relevant to the limitations in the challenged claims. Indeed, the 1st petitioner’s briefs on appeal took pains to repeatedly point out that the invention of Tsang was quite different from the 601 patent. Tsang’s state-dependent method resulted in efficiencies and higher rates that could not be realized using the block-code approach disclosed in the 601 patent specification. Tsang disclosed two encoding methods that were impossible to implement using the block-code approach disclosed in the 601 patent specification, and Tsang’s methods made available additional valid codewords that were not available with the block-code method.
- Tsang’s invention represented a significant advance over the simple block-code method disclosed in the specification of the 601 patent. Tsang expressly explains that [Tsang’s] inventions were not made—and could not have been made—using a one-to-one block mapping method like that disclosed in figure 6 of the 601 patent. Tsang’s method was more efficient than the block-code method because it stored data more densely on a disk. Tsang’s inventions were not made using a block-code method like the one disclosed in the specification of the 601 patent, and did not utilize a block code method like the 4/5 code disclosed in the 601 specification.
- It was thus undisputed that those unique features of Tsang were irrelevant to anticipation of the invention of claims 14 and 17, and that the concept of limitations on the number of consecutive transitions and non-transitions (the j and k constraints in the challenged claims) was disclosed in the Seagate Annual Report and merely repeated in Tsang’s background section. The board did not err in holding that it was persuaded that the petition relied on the portions of Tsang describing the maximum transition-ran constraints j and k, which were also described in the Seagate Annual Report, such that Tsang did not qualify as the work of another.
Petition dismissed, the board’s ruling upheld.
Relevance to the Kenyan jurisprudence
The Constitution of Kenya, 2010, in article 260 (c) defines the term property to include intellectual property. Moreover, in articles 11 (2)(c), 40 (5) and 69 (1)(c) it stresses that the state shall support, promote and protect the intellectual property rights of the people of Kenya.
Kenya ratified and signed at Washington the Patent Co-operation Treaty on the June 19, 1970; as evidenced under the provisions of section 2 of part 1 of the Industrial Property Act, 2001 Cap 509 laws of Kenya. Section 21 (1) of the Industrial Property Act, 2001, Cap 509 of the laws of Kenya provides that the term invention means a solution to a specific problem in the field of technology. The whole of section 21 (3) (b) of the Industrial Property Act, 2001 Cap 509 of the laws of Kenya provides that:
a. The following shall not be regarded as inventions and shall be excluded from patent protection.
b. Schemes, rules or methods of doing business, performing mental acts or playing games.
In John Kamonjo Mwaura v Kenya Industrial Property Institute & another; National Commercial Bank of Africa (NCBA) & another (Interested Party)  eKLR, the court dismissed the petition holding that:
Our finding that the appellant’s patent application consisted of non-patentable subject matter would dispose of this appeal…The policy of patent law is to protect genuine inventions thereby encouraging innovation and rewarding creativity for the benefit of society. That policy objective would not be served if patent registration is granted to what is already in existence and in respect of non-patentable subject matter.
This case is thus relevant to the Kenyan jurisprudence because it clarifies on patentability in intellectual property rights by noting that a patent applicant or owner can overcome anticipation by establishing that the relevant disclosure in the prior-art reference describes their own invention. According to the Wex Definitions of the Cornel Law School, anticipation in patent law means the prior invention or disclosure of the claimed invention by another, or the inventor’s own disclosure of the claimed invention by publication, sale, or offer to sell prior to the inventor’s application for a patent.