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Judge Andrews Grants Summary Judgment of Anticipation in Part Due to Lack of a Common Inventive Entity Between the Asserted Claims and Anticipating Claims

Judge Andrews recently resolved a novel dispute involving anticipation by a prior art patent. On defendant Comcast’s motion for summary judgment of invalidity, Comcast and plaintiff Sprint agreed that the prior art patent in question discloses each of the elements of the asserted patent claims. Sprint Commc’ns Co. v. Comcast IP Holdings, LLC, et al., C.A. No. 12-1013-RGA, Memo. Or. at 4 (D. Del. Jan. 30, 2015). Sprint argued, however, that under section 102(e), anticipation requires a prior art invention “by another.” Because the prior art at issue shared an inventor with the asserted patent, Sprint reasoned, this requirement was not met. Id. at 5. Examining the testimony of this common inventor, however, Judge Andrews determined that “even though [the common inventor] was an inventor of both the [asserted patent] and the [prior art] patent, the two patents do not share a common inventive entity, as there is no evidence from which the factfinder could conclude that [the common inventor] was solely responsible for the asserted claims . . . and the anticipating disclosures . . . .” Id. at 5-6.

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