Intellectual Ventures v. Motorola (Fed. Cir. 2017)
In a short opinion, the Federal Circuit has rejected a PTAB IPR determination finding IV’s patent invalid and has remanded for reconsideration of the case. U.S. Patent No. 7,382,771. Because the patent at issue here was filed prior to March 2013, the pre-AIA first-to-invent rules apply.
The issue here is whether IV can rely upon pre-filing invention evidence to antedate the proffered prior art. Prior to the American Invents Act (AIA), the primary triggering date for prior art was the date-of-invention rather than the date of patent-filing. Because invention is defined as requiring both conceiving of the invention and reducing that invention to practice. Although invention is not complete until actually implemented, we considered conception an important triggering date — thus allowing for an inventor to claim priority back to the date of conception so long as the inventor worked diligently post-conception to reduce the invention to practice. So as not to overly romanticize the golden days of first-to-invent, remember here that “diligence” tends to be very hard to prove and does not allow for seemingly reasonable breaks in the effort to reduce the invention to practice such as business management efforts, financing pushes, or vacations.
Invention as Conception + Reduction to Practice: Some may also be confused about my definition of invention that requires actual reduction to practice. An important legal exception to this definition is that the courts and PTO consider the filing of a fully enabled patent application to count as constructive reduction to practice. A “constructive” fact is something that we know does not exist in realtà, but we announce to be true in the sight of legal authority. Someone might query whether this “constructive” invention qualifies Constitutionally.
Back to our story, the patentee here (IV) argued that its predecessor-in-interest had actually reduced the invention to practice prior to filing of its patent application and prior to the critical date of the referenced prior art. The PTAB rejected that argument — finding that the pre-filing activities did not recreate the entire invention as claimed. On appeal, the Federal Circuit vacated — holding that the PTAB had been too stringent in its requirements. In particular, the Board erred by requiring conception of “authentication and control features” of the claimed LAN since the Board had already rejected a claim construction proposal that would have included those features as required by the the claims.
This is a situation where Broadest Reasonable Interpretation (BRI) comes into play in an interesting way. Generally, BRI is thought to make it easier for the USPTO to cancel questionable claims since broader claims are more likely to encompass the prior art. Here, however, the Broadest Reasonable version of the claims made it easier for the patentee to prove prior conception. I previously discussed a siilar situation involving written description issues.