• Apr 11 2019
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  • Category: CAFC Updates

ATI appeals three final decisions of the Patent Trial and Appeal Board on petitions for Inter Partes Review (“IPR”) filed by LG, holding that all but one of the challenged claims unpatentable as anticipated or obvious. For all three patents (which relate to “shader” technology used in a computer-implemented system that specifies how a computer-graphics three-dimensional image is generated and presented on a two-dimensional screen), the PTAB held that conception was established before the primary reference dates, and that constructive reduction to practice occurred on the filing date of each patent. However, the PTAB held that ATI had not established actual reduction to practice and had not established diligence to constructive reduction to practice, for all three patents. The PTAB then invalidated the patents based on the cited references. The PTAB decision mentions two aspects as showing failure of proof of diligence: (1) the product was redesigned after the conception date to include an optional feature that is not recited in the claims at issue; and (2) that ATI fails to provide a reasonable way for us to determine whether unexplained lapses have not occurred. The CAFC concludes that the PTAB erred in its application of the law of diligence. Under the correct law, diligence is not negated if the inventor works on improvements and evaluates alternatives while developing an invention, and the purpose of the diligence requirement is to show that the invention was not abandoned or set aside. The CAFC finds that diligence was shown, thereby antedating the relevant references, and the decisions of unpatentability are reversed.

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