CAFC says Antedating a Reference under Section 102(g) Focuses on Critical Period as a Whole

Federal CircuitPerfect Surgical Techniques, Inc. v. Olympus Am., Inc., (Fed. Cir. Nov. 15, 2016) (Before Moore, Schall, and O’Malley, J.) (Opinion for the court, Moore, J.) (Opinion concurring in part and dissenting in part filed by Schall, J.)

In an IPR decision, the Patent Trial and Appeal Board invalidated several claims from U.S. Patent No. 6,030,384 as anticipated or obvious over Japanese Publication No. H1033551A. The Federal Circuit vacated and remanded.

The Court disagreed with the Board’s finding that there was a lack of reasonable diligence in reducing the claimed invention to practice, which prevented the Patent Owner from antedating certain prior art.

Pre-AIA section 102(g) allows antedating a reference, which removes it from the prior art for analysis of novelty and nonobviousness. Antedating requires two things: earlier conception; and reasonable diligence during the time just prior to the effective date of the reference and until the invention’s reduction to practice (“critical period”). The Court found that the Board erred, and failed to comply with the purpose of the diligence inquiry. It was not proper to “scour the patent owner’s corroborating evidence in search of intervals of time where the patent owner has failed to substantiate some sort of activity.” Rather, the purpose “is to assure that, in light of the evidence as a whole, ‘the invention was not abandoned or unreasonably delayed.’” The Board improperly focused on three purportedly unexplained periods; failing to apply a rule of reason for evidence presented during the critical period as a whole. For example, the Board criticized the inventor for not indentifying “any specific activities undertaken or the dates of those activities.” Instead, the Court ruled the Board should have considered preparation of comments on draft applications that must have been prepared during the unexplained periods, as well as work completed by the drafting attorney (as the inventor’s agent).

PST also challenged the Board’s claim construction of “perforated.” The Board construed the term to include “passages.” The Court found error because the patent specification stated that the device “may be perforated or otherwise provided with passages.” The use of the disjunctive, therefore, excluded passages from the construction of perforated. Thus, the Board’s finding of anticipation or obviousness was not supported.

Judge Schall’s dissent argued that the Board evaluated diligence using the correct legal standard: “As I read them, our cases turn on whether evidence supports a satisfactory explanation for periods of inactivity.”

The antedating inquiry under Pre-AIA section102(g) is directed to evidence of diligent activity during the critical period as a whole and does not require justifying every period of unexplained inactivity.

The Author

Robert Schaffer

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

Robert Schaffer

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

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