IDS Admissions as Prior Art

Riverwood International Corp. v. R.A. Jones & Co., 324 F.3d 1346 (Fed. Cir. 2003)

Riverwood owned the '789 and '361 patents, each which were improvements on the '806 patent, which was also owned by Riverwood. He sued Jones for infringing the '789 and '361 patents, but Jones alleged that both patents were invalid in light of the prior art '806 patent because (1) Riverwood included the '806 patent as "prior art" in the Information Disclosure Statement (IDS) for the '361 and '789 patents, which constituted an admission; and 2) there were different named inventors on the '806 patents and the later two patents, with only one inventor in common for all three

Note: In a patent application, the prior art references listed in the IDS constitute the closest art of which the applicant is aware of relating to the invention in the application. The application then discloses and claims an invention over this prior art. Prior art may arise from § 102 or from admissions of the parties.

The Federal Circuit found that the '806 patent was not statutory prior art under § 103. While noting that in In Re Nomiya, the CCPA held that "a statement by an applicant during prosecution identifying certain matter not the work of the inventor as "prior art" is an admission that the matter is prior art," the Federal Circuit held that "that doctrine is inapplicable when the subject matter at issue is the inventor's own work," and " a patentee should not be "punished" for being as inclusive as possible and referencing his own work in an IDS." In particular,

[T]here is an important distinction between the situation where the inventor improves upon his own invention and the situation where he improves upon the invention of another. In the former situation, where the inventor continues to improve upon his own work product, his foundational work product should not, without a statutory basis, be treated as prior art solely because he admits knowledge of his own work. It is common sense that an inventor, regardless of an admission, has knowledge of his own work. (quoting Reading & Bates Construction Co. v. Baker Energy Resources Corp., 748 F.2d 645, 223 USPQ 1168, 1172 (Fed. Cir. 1984).

The Federal Circuit next found that the '806 patent was not statutory prior art under § 102(e), because the reference at issue must specifically be "by another." "Thus, just as a patent issued to the same inventive entity cannot be prior art by admission, an application issued to the same inventive entity cannot be prior art under section 102(e)." Here, although the three patents were issued to three different inventive entities, the subject matter of the '806 patent that Jones intended to rely on as prior art and the subject matter of the claims in question in the '361 and '789 patents may have represented the work of a common inventive entity. The Federal Circuit remanded the obviousness issue to the District Court to determine whether or not this was the situation.