ATI Tech ULC v Iancu
ATI Technologies ULC v. Iancu
Nos. 2016-2222, 2016-2406, 2016-2608 Fed. Cir. April 11, 2019 Before Circuit Judges Newman, O’Malley, and Wallach.
ATI Technologies ULC (“ATI”) appeals three final decisions of the Patent Trial and Appeal Board (“PTAB” or “Board”) on petitions for inter partes review filed by LG Electronics, Inc. (“LGE”). The Board held all but one of the challenged claims unpatentable as anticipated or obvious. LGE withdrew from its appeal and cross-appeal, and the PTO Director intervened in support of the PTAB decisions.
This case arises under the pre-AIA “first to invent” statutory scheme. ATI filed Rule 131 declarations to “swear behind” prior art references. The PTAB held that conception was established before the primary reference dates, and that constructive reduction to practice occurred on the filing date of each patent. However, the PTAB held that ATI had not established actual reduction to practice or diligence to constructive reduction to practice for the three patents. The PTAB therefore invalidated the patents based on the cited references. The Federal Circuit reversed, finding that ATI exercised the requisite “reasonably continuous diligence.” The court concluded that reasonable diligence does not require uninterrupted effort or the concentration of entire energies upon the effort.
The PTAB decision mentioned that, after the conception date, ATI worked on an optional feature that was not recited in the claims. In response, the court stated that “[d]iligence is not negated if the inventor works on improvements and evaluates alternatives while developing an invention.” ATI worked to increase the capability of the product to meet the criteria of a potential customer. The Court noted that “the PTAB did not state or suggest that this work was not within the . . . patents . . . [n]or does the PTAB propose that any of the work documented in the 1300 pages of exhibits is outside of the claims.”
The PTAB indicated that “ATI fails to provide a reasonable way for us to determine whether unexplained lapses have not occurred.” However, the Court stated that the PTAB “identified no delays, no gaps in activity.” The court noted that the “trial record shows no inquiry of any witness, asking about lapses in activity related to” reduction to practice of the invention. In response, the Director posited that ATI bore the burden of proof of diligence. The court found that the Director did not explain why the burden was not met, stating that “the Director does not point to the remotest suggestion of abandonment or setting aside of the . . . technology.”
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Read more: Federal Bar member attorneys may access the full case summary by registered patent attorney B.C. “Bill” Killough in the May 2019 issue of Federal Circuit Case Digest
B.C. Killough is a registered patent attorney based in Charleston, SC. On behalf of his clients, Bill has obtained more than 300 United States patents, participated in prosecuting more than 100 foreign patent applications and he has filed more than 1000 trademark applications with the US Patent and Trademark Offices.