IPS Group Inc.

Patent Trials and Appeals Board

Sep 1, 2021

2021002695 (P.T.A.B. Sep. 1, 2021)

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.”).
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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.
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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
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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
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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
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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,
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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
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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
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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;
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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
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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
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’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
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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
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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.
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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
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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 Ҥ 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.
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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.
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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
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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
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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).
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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
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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
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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.
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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).
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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.
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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