Improvement Patent Does Not Anticipate Original Idea

Reference building on first inventor’s idea does not qualify as prior art to first inventor’s patent

In a case involving an interesting patent filing timeline, the Federal Circuit has ruled that a patent disclosing an improvement to an original idea cannot be used to invalidate the original inventor’s patent.

The original inventors conceived of a new scheme for encoding data to be recorded on optical discs. Before they filed for a patent on the new scheme, they disclosed their idea to others. The others took the original idea, improved it, and filed for a patent on the improvement, also before the original inventors filed for their patent.

The original inventor’s patent was then challenged before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO) based on the improvement patent, which disclosed the original idea and the improvement. The PTAB found, and the Federal Circuit affirmed, that the improvement disclosure was not relevant work of “another” under the statute, despite it being the work of inventors other than the original inventors. The Federal Circuit reasoned that the improvement was simply irrelevant to the claims in the original inventor’s patent and that the original idea disclosed in the improvement patent was not the work of “another.” In other words, what was claimed in the original patent was the original idea and not the unique features of the improvement patent.