ATI Technologies ULC v. Andrei Iancu (USPTO)


Docket No. 2016-2222, -2406, -2608 (IPR2015-00325, -00326, -00330)

NEWMAN, O’MALLEY, WALLACH
April 11, 2019

Brief summary: PTAB finding of invalidity due to ATI’s lack of diligence before filing its patent applications reversed (e.g., “[t]he PTAB identified no delays” or “gaps in activity”).

Summary: ATI appealed three final IPR decisions (filed by LG Electronics) of ATI’s US 7,742,053; 6,897,871; and 7,327,369 relating to “how a computer-graphics three-dimensional image is generated and presented on a two-dimensional screen” (“Unifier Shader Patents” (“USPs”)), finding “all but one of the challenged claims unpatentable as anticipated or obvious” (only ‘871 claim 20 was held patentable). The USPs were invalidated after the PTAB held that ATI had not established actual reduction to practice” or “diligence to constructive reduction to practice, for all three patents” to disqualify the alleged prior art. For the ‘053 patent, the FC explained that “[t]he dates of conception and constructive reduction to practice are not disputed on appeal” but that “the PTAB held that diligence and actual reduction to practice had not been shown”. The ’871 and ‘369 patents share a common specification and priority date (Nov. 20, 2003), and the PTAB held similarly as it did for the ‘053 patent. The FC panel explained that “Rule 131 is called the ‘swearing back’ or ‘swearing behind’ provision” (MPEP § 715; only available for AIA applications to overcome 102(g) rejections (interference)) and that “the applicant bears the burden of proof to establish either: (1) prior reduction to practice; or (2) prior conception ‘coupled with due diligence’” and “requires documentary support” (In re Steed, FC 2015). Further, the FC panel explained, “[a] patent owner need not prove the inventor continuously exercised reasonable diligence throughout the critical period” but “must show there was reasonably continuous diligence” (i.e., “periods of inactivity…do not automatically vanquish a patent owner’s claim of reasonable diligence”, “inventor’s testimony…must be corroborated by evidence”, “evidence is considered ‘as a whole’ under a rule of reason” (Perfect Surg. Techs., FC 2016)). The PTAB concluded ATI had not shown proper proof of diligence because ATI’s inventor (Laurent Lefebvre) “redesigned R400” (the name for ATI’s project) “after the conception date, to include an optional feature” (“a ‘second chip design’”) “that is not recited in the claims at issue” without an explanation of which activities applied to the original or modified design, and that “ATI fails to provide a reasonable way for us to determine whether unexplained lapses have not occurred.” The FC panel noted that “[t]he PTAB identified no delays” or “gaps in activity” and “does not explain or identify” the “unclaimed features” (Power Integrations, FC 2015 (the Board must ‘fully and particularly set out that bases” for its decision); “we are directed to no view of the evidence that could support a conclusion that ATI set aside the development”; “PTAB did not provide full analysis for the ‘871 and ‘369 patents, and referred to the reasoning in the ‘053 opinion”). In addition, the FC panel explained, “[d]iligence is not negated if the inventor works on improvements and evaluates alternatives while developing an invention” and there is no rule “that evidence of diligence must be excluded if there is any possibility that it could be construed in support of an invention beyond the reach of the count” (In re Jolley, FC 2002). Thus, the PTAB’s decision was reversed.

This entry was posted in Conception and Reduction to Practice, Diligence, Inter Parties Review (IPR), IPR. Bookmark the permalink.

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