• Mar 26 2019
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  • Category: CAFC Updates

GEP petitioned the PTAB for inter partes reviews of all claims of two patents owned by Arctic Cat relating to an electrical-connection box having an array of receptacle openings that allow wires to be arranged and secured in various positions for distributing power to various electrical components of a personal recreational vehicle. The Board determined that all claims of the patents are unpatentable and Arctic Cat appeals. The CAFC concludes that the Board did not abuse its discretion in rejecting a deposition-transcript submission because even if the regulation provides for submission of a full transcript, the regulation does not say that the submission may be made at any time. Rather, the Board has discretion to decide when a filing is too late and given the strong statute-based interest in expedition in inter partes reviews, the CAFC sees no basis for deeming the Board’s expungement decision in this case to be an abuse of discretion. The CAFC also finds that the Board correctly held preamble references to a vehicle in the claims at issue not to be limiting based on the principle that a preamble is not limiting where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.  The CAFC further finds that that the Board improperly determined that the evidence did not establish diligence and that a certain reference (Boyd) was prior art. Applicant antedated Boyd by showing it (1) conceived before Boyd’s filing date, and (2) diligently reduced the conceptions to practice. Lack of diligence cannot be inferred from putting the invention into someone else’s hands for needed testing and awaiting test results, at least where oversight was diligent. Accordingly, as to one of the patents, the CAFC reverses in part, vacates in part, and remands, but as to the other patent, affirms.

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