Print PDF

“Admission” of Prior Art Not Necessarily Binding

March 31, 2003

Decision icon Decision

Last Month at the Federal Circuit - April 2003

Judges: Linn (author), Clevenger, and Schall

In Riverwood International Corp. v. R.A. Jones & Co., No. 02-1030 (Fed. Cir. Mar. 31, 2003), the Federal Circuit vacated the district court’s holding that Riverwood International Corporation’s (“Riverwood”) U.S. Patent No. 5,241,806 (“the ‘806 patent”) is prior art by admission, vacated the district court’s judgment that certain claims of Riverwood’s U.S. Patent Nos. 5,666,789 (“the ‘789 patent”) and 5,692,361 (“the ‘361 patent”) are invalid as obvious, and affirmed the district court’s judgment that the ‘789 and ‘361 patents are infringed.

Riverwood is the owner of the ‘806, ‘789, and ‘361 patents (“patents-in-suit”), which are directed to packaging methods and machines. Riverwood filed suit against R.A. Jones & Co. (“Jones”), alleging that Jones’s cartoning machines infringed certain claims of the patents-in-suit. Jones counterclaimed, alleging invalidity.

During prosecution of the ‘789 and ‘361 patents, Riverwood’s attorney filed an Information Disclosure Statement (“IDS”) listing the ‘806 patent as “prior art.” Jones argued that this transformed the ‘806 patent into prior art by admission. In the alternative, Jones argued that the ‘806 patent is prior art under 35 U.S.C. § 102(e). Riverwood argued that a common inventor developed the portion of the particular embodiment of the ‘806 patent that formed the relevant disclosure and claims for the ‘789 and ‘361 patents. Prior to trial, the district court held that the ‘806 patent was prior art by admission and could be presented as such to the jury during trial. The jury found that Jones infringed certain claims of the ’789 and ’361 patents, and also found all asserted claims of the ‘789 and ‘361 patents invalid as obvious.

On appeal, the Federal Circuit ruled that one’s own work may not be considered prior art in the absence of a statutory basis, and a patentee should not be punished for referencing his own work in an IDS. The Court thus determined that the ‘806 patent, if issued to the same inventive entity, is not prior art regardless of the admission. Likewise, the Court determined that the ‘806 patent is not prior art under 35 U.S.C. § 102(e) if issued to the same inventive entity, as the statute requires that the reference at issue must be “by another.” The patentsin- suit, however, were not issued to the same inventive entity. What is significant, according to the Court, is not merely the differences in the listed inventors, but whether the portions of the reference relied on as prior art and the subject matter of the claims in question represent the work of a common inventive entity. The Court accordingly vacated the district court’s holding that the ‘806 patent is prior art and its judgment of invalidity, and remanded for appropriate findings.

Turning to the issue of infringement, the Federal Circuit found that the district court had not erred in its construction of the term “flight bars” to include a plurality of structures. Jones argued that the district court had erred by not limiting the term “flight bars” to a unitary structure. None of the patents-insuit explicitly defines the term, nor is the term found in any dictionary or treatise. The Court found nothing in the claim language, specification, or prosecution history that is inconsistent with the district court’s construction. Jones also argued that the district court had improperly relied on extrinsic evidence, including expert testimony from another case involving the same patents. The Federal Circuit did not find this reliance improper, as the extrinsic evidence did not contradict the claim language or the import of the specification.