How BRI Impacts Proof of Prior Invention

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.

Written Description, Disclosed Embodiments, and BRI

 

 

 

55 thoughts on “How BRI Impacts Proof of Prior Invention

  1. “It IS interesting, is it not Night, how the PTAB always (or almost always) errs in favor of finding the patent invalid?”

    Or maybe it is the CAFC that errs in favor of finding the patent valid? Seems like that may be more likely given the tendency of Supreme Court to overturn CAFC decisions with wide majorities.

  2. Because at least 80% of IPRs are in response to patent infringement suits, and the vast majority of patent suits are on older [and thus pre-AIA] patents, these 35 USC 102(g) based prior invention evidence declarations to try to “swear behind” IPR submitted prior art dates will continue for many years. This decision correctly ties proof requirements to the claim elements. However, being an inter partes proceeding run by APJs, with available cross-examination, the success rate for this effort has been low.

  3. I know that you have always had negative feelings about the ability to have a constructive reduction to practice, but can you flesh out this following commoner a little more?

    Someone might query whether this “constructive” invention qualifies Constitutionally.

    1. This is what 35 USC 112 enablement and invention description in the filed patent application provides.

      1. Paul,

        That does not answer my question to the Prof.

        If anything, it places his comment more in the spotlight for some type of explanation as to what he merely hints at.

    2. The Constitution authorizes patents to inventors (not constructive inventors). I think that was the point being made.

      Likewise, there is no such thing as a “second inventor.”

      You might make a light bulb in your basement this evening, but you cannot legitimately claim to have invented the light bulb, as the light bulb has already been invented.

      Accordingly, a first inventor to file system that contemplates, and would issue a patent to, a first filer that is a “second inventor” is also unconstitutional.

      1. Thanks Les.

        The problem of course is that inventors are – by definition – inclusive of the constructive inventor.

        Do you have some Constitutional tome saying otherwise?

        1. Nope, just the one pager.

          Also, I didn’t write the article. I just answered your question based on my understanding of the article after having read it.

          1. Les,

            I understand that you have answered “based on [your] understanding.”

            I would remind you though that your understanding remains flawed because you are not accepting the legal term of art for “inventor” with your view that there can actually be only a single very first inventor.

            The term “inventor” in US patent law has never meant what you are “understanding” by that term.

            Not pre-AIA.
            Not post-AIA.

            Interestingly, Mark Stadnyk and MadStad Engineering, Inc. tried with that same argument, but the court did not reach the argument:

            link to caselaw.findlaw.com

            Take note of footnote 1….

              1. You assume your conclusion and do so by not taking the time to understand the legal meaning of the term “inventor.”

                Unclench your eyes, please.

                1. Show me this legal dictionary that dictates this legal definition of inventor of which you speak.

                  Furthermore, show me that the founding fathers consulted this dictionary when they drafted the Constitution.

                2. Les,

                  The Constitution does not control what the word “inventor” means.

                  The Constitution allocates authority to set the rules of the game (including what the term “inventor” means), and allocates that authority to the Legislative Branch.

                  The Legislative Branch HAS set the definition by provided a system – first in a semi-strict “finish line” (pre-AIA) and then in a strict “finish line” (AIA).

                  In both of those systems, Congress has set forth that there can be multiple inventors, each with an inchoate right, and that only the one that properly finishes the race and crosses the line is deemed the inventor.

                  It is Congress that dictates that your “one true inventor” who does NOT finish the race (nor perhaps even joins the race), and who does not put his invention into the public domain, forfeits his right to be deemed “the inventor” as YOU want to use that term.

                  This comes from a very basic understanding of US Patent law.

                  I suggest that you familiarize yourself with such basics.

                3. The constitution USES the word inventor in indicating what is authorized. Congress doesn’t have the power to change that meaning without a constitutional amendment.

                  Why are you trying to obscure that?

                  Do you have some vested interest in first to file?

                4. The constitution USES the word inventor in indicating what is authorized. Congress doesn’t have the power to change that meaning without a constitutional amendment.

                  Why are you trying to obscure that?

                  There is zero attempt at obscuring anything and every attempt to have you understand how to read the Constitution. You simply are not grasping the fact that it is Congress that has been provide by the Constitution to set the rules of the race – and those rules include setting the LEGAL definition of the term “inventor.”

                  Your call for a Constitutional amendment only shows how little you understand what you are trying to talk about.

                  Do you have some vested interest in first to file?

                  Not at all. Quite in fact, I have pointed out to you how Congress set the meaning of the term in BOTH pre-AIA and post-AIA contexts. Clearly, with BOTH contexts going against your attempted view, your wanting to paint this as some type of “Pro-AIA” bias shows (again) that your level of understanding is quite below that which is necessary to have a meaningful dialogue.

                  Please undertake some basic learning on this area of law.

                5. By your estimation then, Congress could define bear arms to mean carry a weapon only when enlisted in the armed forces, thereby whipping away the right to bear arms. Congress cannot, and oh by the way, has not, redefined the term “inventor”. What Congress has done is passed an unconstitutional law.

                6. Les,

                  Your attempt at “redefining” tries too hard.

                  Your attempt is a definition that is a nullity. The definition of inventor, as used by Congress is not.

                  Perhaps if you understood the actual background of the term (beyond just the dictionary meaning) and folded in to your appreciation the understanding of what an inchoate right means, you would not be so deep into the weeds.

                7. The observation of what you yourself have disclosed as doing (using a dictionary term) is not – and cannot be – an ad hominem attack.

                  Further, as I have already pointed out – there is NO deflection coming from me. I am the one trying to open your eyes to the situation that you want to discuss, a situation firmly in the context of law.

                  I have attempted to reason with you by pointing out words of Congress, what the Constituional directive of allocating authority means, and reminding you of other related concepts like “inchoate rights.”

                  Your accusation itself rings hollow. Not only that, it rings in you accusing me of that which you are doing (pretending that my attempts at helping you understand the legal context is “deflecting” when it is your lack of appreciating what I am sharing with you and your desire to remain in an ignorant state of the context of the discussion that is deflecting from the points that I share with you).

                  Instead, perhaps, pick up and examine the points that I have provided to you.

                  Start with “inchoate.”

                  Thanks

      2. The Constitution says nothing about “constructive” or “actual” RTP, these questions have been settled for more than 100 years, and they will be moot once all the pre-AIA patents expire.

      3. Actually, long before the AIA [and see 102(g)(2)] an independent second inventor that files first could win if the first inventor “abandoned, suppressed or concealed” his invention.
        Note that a secret conception or secret actual reduction to practice does not necessarily “promote the progress of..useful arts” – the stated purpose of the Constitution’s copyright and patent clause. In that sense, a fully enabled “constructive reduction” published application or patent is more effective. [On the other hand appreciate your view that there is something more appealing about an actually physically constructed invention than a “paper patent.”]

        1. an independent second inventor that files first could win if the first inventor “abandoned, suppressed or concealed” his invention.

          Words of Congress.

          Les, please open your eyes and see this.

        2. I have no beef with a constructive reduction to practice. I was just explaining what the article was saying to the guy who said he didn’t understand it.

          My beef is with giving patents to people that are not inventors.

          1. Your “beef” is based on an ignorant level of “understanding” of the legal term of art, the Constitutional construction of the delegation of authority to which branch of the government to set the terms of the law, and your rather odd refusal to educate yourself.

            Les, you are your own worst “enemy” on this topic.

            1. First of all, my beef has nothing to do with any legal definition. Even if your ridiculous assertions were correct, it would still be wrong to issue patents to people that are not inventors.

                1. The controlling legal meaning is what the was meant when the constitution was written.

                  I find your arrogance disturbing.

                2. It is NOT “my arrogance” that is “disturbing.”

                  It is the fact that I know of that which I speak of, that you do not, and that you refuse to recognize the difference.

                  That is NOT any attribute of mine – that is an attribute of your own. Instead of attempting to project some attribute on me, spend your efforts being less dogmatic about your point of ignorance.

              1. It is depressing to see pointless exchanges between folks who think they can personally define words in Constitution the way they want to, since it is indisputable that only a Supreme Court majority has that authority.

                1. It is even more depressing when some sAme one bystander wants to snipe at people talking about the Constitution and gets it wrong that the Supreme Court majority has some power to define words.

                  Just curious Paul, I remember you sharing that you had a USPTO number, but relinquished it, but what state is your attorney oath in? I want to see if your state attorney oath places the Supreme Court above the Constitution.

  4. It’s certainly true that if your claim is broader and has less elements, it’s easier to show conception. And if the art is essentially self-enabling (“anybody could program a standard programmable computer to perform the stated function”) the broader claim is easy to “contructively reduce to practice.”

    Obviousness can be more difficult to address in that case, of course.

    Why is IV even still a thing, by the way? Has there ever been a shadier pack of l0w life b0ttom feederz in the history of the business world?

    1. >>And if the art is essentially self-enabling (“anybody could program a standard programmable computer to perform the stated function”) the broader claim is easy to “contructively reduce to practice.”

      You always say things like this as if this is some special property of computer information processing inventions. Fact is that is the way it is with almost all inventions. Once you know what it is, then you can build it. Rarely is this not the case in bio/chem, mechanical, and information processing. A chemist can make any molecule once they know what it is. It isn’t hard building a machine once you know what it is. Etc.

      But, you keep up with your paid propaganda where you play off the ignorance of the masses. I am sure you have dependents to feed and you seem to have found your niche claiming everyone else (but you) is a low life.

      1. “What it is” is a very different thing from “what it does.” Knowing the latter (e.g., its function or desired property/trait) is not a direct path to the former for most non-obvious “innovations”.

        Nothing complicated about this.

        1. What it is” is a very different thing from “what it does.”

          Certainly.

          And yet, you yourself seem to have a real difficulty in applying that concept vis a vis the patent doctrine of inherency.

            1. Not sure why you are thanking me.

              It’s not as if this comment changes anything about the options of claim formats fully recognized as appropriate under the law…

              1. Not sure why you are thanking me

                I’m trying to encourage you to continue to make more meaningful declarative statements that aren’t obscured by dust and innuendo.

                I know it has zero chance of working. Just another Sisyphean moment on PatentlyO.

        2. “Knowing the latter (e.g., its function or desired property/trait) is not a direct path to the former for most non-obvious “innovations”.”

          Well, except that you have told us over and over that all software is obvious and inherent even in the mere existence of computing machines.

          It follows then, does it not, that after reading and understanding the disclosure of what a computer based machine does, one of ordinary skill in the art could make a machine that does that, without undue experimentation.

          1. Les,

            Your statement seems to miss a flaw in Malcolm’s world view (albeit perhaps a nuanced one):

            Well, except that you have told us over and over that all software is [omitted] inherent even in the mere existence of computing machines.

            Malcolm has consistently failed to properly address the inherency doctrine.

            I do not know if you can say that he says “it is there” when he refuses to clarify what he does say in terms of the inherency doctrine.

            And while he is not the only one that engages in this error, he is one that has refused to address this legal point and the impact of this legal point on his feelings.

            1. Perhaps Malcolm could “make more meaningful declarative statements that aren’t obscured by dust and innuendo” directly on point to the inherency doctrine when he wants to play the “House” game that all future improvements to a machine that come by way of software are somehow “already in there.”

              He seems eager to “encourage others” on things that he does not bother with himself….

  5. But Judges Dyk, Plager and Reyna, we are the PTAB. We make the rules, not you. Our rules say that we can have two claim constructions, one that favors invalidity when looking at proof of prior invention, and another that favors invalidity when viewing the prior art. The only rules that count are those that favor invalidity. After all, we must please petitioners so that they file petitions and keep us filled with work.

      1. It IS interesting, is it not Night, how the PTAB always (or almost always) errs in favor of finding the patent invalid?

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