The U.S. Court of Appeals for the Federal Circuit has now held that listing an earlier-issued patent in an Information Disclosure Statement (IDS) does not automatically result in a finding that such earlier-issued patent is § 102(e) prior art to the later application. Where there is at least one inventor common to both the earlier-issued patent and the later application, one can avoid a determination of "prior art by admission" by showing that the inventor submitting the later application also invented the relevant portion of the subject matter disclosed in the earlier-issued patent. Riverwood International Corp. v. R.A. Jones & Co., Inc., Case Nos. 02-1030,-1154 (Fed. Cir. Mar. 31, 2003).
Riverwood sued Jones for infringing the `806 patent and two later patents, all directed to methods and machines for use in the packaging industry. All three patents shared one common inventor, but did not have completely overlapping inventive entities. During prosecution of the application for the two later patents, the inventors identified the `806 patent as prior art in an IDS. The district court deemed this an "admission" and so instructed the jury, which found the two later patents invalid as obvious in light of the `806 patent.
Riverwood appealed. The Federal Circuit held that although a reference may constitute prior art based on admissions in an IDS, such is not the case when the reference is the inventor’s own work. If the relevant portion of the `806 patent was invented by the same inventive entity responsible for the allegedly obvious matter in the later patents, inclusion of the `806 patent in the IDS would not be an admission of prior art status. The case remanded for a determination whether both the portion of the `806 patent relied on as prior art and the subject matter of the claims at issue were the work of a common inventive entity.
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