Promega Corp. v. Applied Biosystems, LLC

An earlier patent application can serve as potentially invalidating prior art if both patents were not completely owned by the same person or organization at the time of invention.

Opinion (Posner): Promega Corp. ("Promega") filed an action seeking a declaration that Patent No. RE 43,096 owned by Applied Biosystems, Life Technologies, Corp., and the University of California (collectively "Life Tech") was invalid for anticipation and obviousness, Life Tech counter claimed alleging Promega infringed the challenged patent and moved for summary judgment. Promega's argument rested on a patent (the '800 patent), issued one month before the '096 patent, that claims similar subject matter. Both patents share a common inventor, although the '096 patent list four additional inventors. An earlier patent application will not render a later patent obvious if both patents were owned by the same person or organization. To be owned by the same person or organization there must have been complete identity of ownership at the time of invention. Life tech argued that the University of California owned both patents at the time the '096 application was filed. However, because the University added an inventor to the patent four years after the '096 application was filed and because that inventor did not assign his rights in the patent to University until that time, the court concluded that the University did not have full ownership of both patents at the time the '096 application was filed and, therefore, the '800 patent could serve as invalidating prior art. The court determined that the '800 patent expressly or implicitly described every element of two of the challenged claims in the '096 patent, and therefore rendered those claims INVALID for anticipation. Similarly, the court determined that disclosures in another prior patent demonstrated that the remaining claim at issue was obvious and, therefore, INVALID. The court also found that, had the '800 patent not been invalidating prior art, each of the challenged claims would still have been INVALID under the doctrine of obviousness-type double patenting.