Third-Party Testing Does Not Disrupt “Diligent” Reduction to Practice

In Arctic Cat Inc. v. GEP Power Products, Inc., Nos. 18-1520, -1521 (Fed. Cir. Mar. 26, 2019), the Federal Circuit held that the Board erred in finding a reference (Boyd) was prior art under 35 U.S.C. § 102(e) to Arctic Cat’s ’188 and ’822 patents. The Federal Circuit reversed the Board’s unpatentability determination based on Boyd for the ’188 patent, but affirmed the unpatentability determination for the ’822 patent based on a different ground.

The two Arctic Cat patents claim priority to October 29, 2002. Boyd, the asserted reference, was filed April 1, 2002. Arctic Cat established conception before Boyd’s April 2002 filing date. But the Board found that the inventor failed to account for his personal activities reducing the invention to practice for “approximately half of the days” between April 1, 2002 and October 29, 2002. The Board accordingly held the invention had not been diligently reduced to practice, and that Arctic Cat could not antedate Boyd.

The Federal Circuit reversed that determination, finding the Board applied “too rigid a standard,” and held Arctic Cat successfully antedated the Boyd reference. The Court noted that most of the “identified gap in [the inventor’s] personal activity” could be attributed to third-party testing of the invention, and further held third-party testing “does not give rise to an inference of unreasonable delay or abandonment.” The Court held Arctic Cat’s invention was diligently reduced to practice and that Arctic Cat had successfully antedated Boyd.