Developing Optional Feature Did Not Disrupt “Diligent” Reduction to Practice

In ATI Technologies ULC v. Iancu, Nos. 2016-2222, -2406, -2608 (Fed. Cir. Apr. 19, 2019), the Federal Circuit reversed the Board’s decision that certain claims of ATI Technologies’ patent were unpatentable, holding that the Board erred in finding that ATI failed to antedate primary references used in anticipation and obviousness challenges.

ATI established conception of its invention before the date of the primary references, but the Board found that the inventor redesigned the invention to include unclaimed features and that the inventor failed to “provide a reasonable way” for the Board to determine “whether unexplained lapses have not occurred.” The Board accordingly held that the invention had not been diligently reduced to practice and thus ATI failed to antedate the primary references.

The Federal Circuit reversed, finding the Board applied “the wrong standard for diligence.” The Court, citing its 2003 decision in In re Jolley (308 F.3d 1317, Fed Cir. 2002), held that “[d]iligence is not negated if the inventor works on improvements and evaluates alternatives while developing an invention.” The Court further found the Board’s “unexplained lapses” conclusion was not supported by the record, because no question of “unexplained lapses” was raised at the hearing and no additional information concerning corroboration was requested. The Court thus held ATI successfully antedated the primary references and reversed the Board’s unpatentability determinations.