Arctic Cat Inc. v. GEP Power Products, Inc.

Docket No. 2018-1520, -1521 (IPR2016-01385, -01388)
PROST, REYNA, TARANTO
March 26, 2019

Brief summary: Board IPR findings of AC’s ‘188 patent claims unpatentable for anticipation and obviousness vacated (e.g., inventor proved prior conception and diligent reduction to practice); finding ‘822 claims invalid for obviousness affirmed. Claim preambles found not to be limiting ((e.g., “merely identifies an intended use”).

Summary: Arctic Cat (AC) appealed Board IPR finding that all of the claims of AC’s pre-AIA US 7,072,188 and 7,420,822 relating to a “power distribution module for a person recreational vehicle” (‘188) or a “personal recreational vehicle” (‘822) are unpatentable. AC argued that the Board erred by rejecting its submission of an inventor deposition transcript, finding the preambles of some claims not limiting, and finding “Boyd” (US 6,850,421) to be applicable prior art. The ‘188 and ’822 patents claim the same priority date and “have essentially the same specification”, the ‘822 patent being a continuation of the ‘188 patent. The Board instituted IPR on several grounds of anticipation and obviousness, only one of which for each patent did not include the Boyd reference. During the proceedings, GEP cross-examined AC’s sole inventor Mr. Janisch and submitted the portions of the deposition transcript that it cited in its replies. AC later filed the full deposition transcript “without any request for permission” and the Board “expunged” it as “unauthorized and untimely” (e.g., AC did not “explain[] why…the transcript could not have been filed earlier”.) Under an abuse of discretion standard, the FC panel found no error in this determination since § 42.53 “does not say that the submission at issue here…may be made at any time” and “the Board has discretion to decide when a filing is too late” (noting that the Board panel in Zhongshan, IPR2014-01121 “concluded that the proponent of any deposition testimony is indeed obliged to file the full transcript”). Regarding the preamble limitations, the FC panel explained that AC only “meaningfully argued” that the preamble term “personal recreational vehicle” is limiting. The FC panel explained that “[i]n general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim” (Catalina Mktg., FC 2002 (“a preamble is not limiting ‘where a patentee deifnes a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use’”); In re Schreiber, FC 1997 (“recitation of a new intended use for an old product does not make a claim to that old product patentable”); Deere, FC 2012) and that “as a general rule preamble language is not treated as limiting” (Aspex Eyewear, FC 2012). And, the FC panel explained, “the effect of preamble language” is treated “as a claim-construction issue” decided “de novo as an issue of law where, as here, the issue is decided only on intrinsic evidence” (Deere; Teva, US 2015). The FC panel agreed with the Board that the ‘188 an d’822 preambles are not limiting (e.g., “merely identifies an intended use” that does not “impose any structural requirement”, no evidence that AC relied “on the preamble during prosecution to distinguish the claimed invention from the prior art”, “does not supply ‘antecedent basis’” (Catalina); differs from Proveris (FC 2014), Deere, and Poly-Am. (FC 2004); not Ex parte Jepson (1917) claims in which preambles are limiting (does not include “wherein the improvement comprises”) (§ 1.75(e); Pentec, FC 1985). AC also argued that the Board incorrectly ruled that the Boyd reference is prior art under § 102(e)(2) because Mr. Janisch invented the claimed subject matter before Boyd’s filing/priority date and that the relevant disclosures of Boyd were actually made by Mr. Janisch (i.e., “not actually ‘by another’” (not reached by the FC panel here)). The FC panel explained that “[a]ntedating of Boyd in this case” required conception and diligent reduction to practice (“reasonably continuous…periods of inactivity…do not automatically vanquish…reasonable diligence”) until AC’s patent application was filed (Perfect Surg. Techs., FC 2016 (“inventor’s testimony of reasonable diligence throughout the critical period ‘must be corroborated by evidence’”); Brown, FC 2006 (invention “was not abandoned or unreasonably delayed”). The FC panel agreed with AC, finding “the details the Board found missing from Mr. Janisch’s explanation do not suggest lack of reasonable diligence” (e.g., “awaiting test results…does not give rise to an inference of unreasonable delay or abandonment”). The Board’s anticipation and obviousness determinations that relied on Boyd were therefore vacated (the ‘188 claims), but affirmed those not reliant on Boyd (‘822 patent, claims 1-10, obviousness based on Svette and Matsuoka).