by Dennis Crouch
In its final judgment, the Patent Trial & Appeal Board (PTAB) found against Arctic Cat — finding all of the challenged claims unpatentable. On appeal, the Federal Circuit has rejected the judgment — holding that the Arctic Cat patent claims should be given priority as of their invention date rather than simply the priority filing date. This is a case were the patent claims appear valid under pre-AIA law, but would be invalidated if AIA prior art rules applied.
U.S. Patent Nos. 7,072,188 and 7,420,822, covering an electrical connection box for distributing power in a Recreational Vehicle (RV). These Arctic Cat patents claim a priority filing date of October 29, 2002. The key prior art reference (Boyd) was filed as a patent application seven months prior – April 1, 2002. Boyd was not yet prior art at the moment it was filed, but did become prior art once the application published in 2003. The point of publication is the trigger for recognizing a U.S. application as prior art — however, at that point its effective prior art date is set back to the filing date.
This case is a pre-AIA lawsuit and thus 102(e) applies.
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 …
Pre-AIA 102(e) is directly parallel to post-AIA 102(a)(1). A key change in Section 102 was a move toward a filing-date focus and away from an invention-date. That shift is reflected in comparing these two provisions. Pre-AIA 102(e) looks for prior art filings from “before the invention” while the post-AIA 102(a)(2) looks for prior art applications filed “before the effective filing date of the claimed invention.”
Under traditional U.S. law, invention is a two step process: (1) conception; and (2) reduction to practice. The courts treat conception as an important marker and can count as the priority date of invention so long as the inventor acted diligently to reduce the invention to practice. Here, everyone accepted that Actic Cat’s inventor had conceived of the invention prior to April 1, 2002. The dispute centered on whether the inventor exhibited “reasonable diligence” up until the application was filed (constructive reduction to practice).
In its ruling, the PTAB held that the inventor lacked diligence. In particular, the inventor could not account for particular reduction-to-practice activities for about three months of the seven-month delay: April 1 – April 29 and also August 16 – October 18. A quirk of the case is that during those gaps, period Arctic Cat had actually hired Boyd’s employer Tyco to test the invention. On appeal, the Federal Circuit found sufficient diligence by hiring Tyco to test the idea and persisting in pushing Tyco to complete its testing.
An unusual aspect of the court’s decision here is the way that it appears to focus on whether the PTO provided the required evidence to disprove diligence whereas the diligence question ordinarily focuses on whether there is sufficient evidence to prove diligence.
Lack of diligence cannot be inferred from putting the invention into someone else’s hands for needed testing and awaiting test results for a short period commensurate with the testing need, at least where oversight was diligent. . . There is no substantial evidence of any meaningful inattention to the task of reducing the invention to practice.
The court’s conclusion here is that the inventor was sufficiently diligent in pursuit of reducing the invention to practice and therefore can claim priority back to the proven invention date that predates the asserted prior art.
Derivation: Post-AIA, it is still possible that Arctic Cat would get its patent. In particular, Arctic Cat argues that the asserted prior art (Boyd) included material derived from the Arctic Cat inventor. If correct, then Boyd could be knocked-out under the 102(b)(2) exception. The PTAB rejected this argument (as it applied pre-AIA) and the Federal Circuit found the question moot based upon the already discussed pre-dating.
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I mentioned in the introduction that the electric box is designed to be used for a Recreational Vehicle. That statement is included within the claims, but only in the preamble:
1. A power distribution module for a personal recreational vehicle comprising: . . .
Recreational Vehicle is not included elsewhere in the claims and here the court found that it was a non-limiting statement of purpose for an already structurally complete invention. (Noting that “it makes no difference to our conclusion whether the standard from Phillips or a ‘broadest reasonable interpretation’ standard applies to this threshold issue of claim construction.”).