35 U.S.C. §102 (pre-AIA) A person shall be entitled to a patent unless — (e) the invention was described in —
(1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or
(2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent . . .
In Duncan Parking Technologies v. IPS Group, the PTAB upheld some claims and determined other claims were anticipated under 35 U.S.C. § 102(e) (pre AIA) despite the fact that it was undisputed that the prior reference, King '054, described all the features of the patent at issue, King '310. The determination of anticipation turned instead on whether the '054 patent was “by another.”
The prior art reference, King '054, had one inventor, David King, in common with the patent, King '310. With respect to the upheld claims, the Board agreed with IPS that the upheld claims reflected the sole invention of King, and the portions of King '054 on which Petitioner DPT relies was King's own work, and hence not “by another.”