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From Intellectual Property Law Daily, April 11, 2019

PTAB erred in applying law of diligence in review of graphics processing patents

By Brian Craig, J.D.

Because the PTAB erred in holding that diligence had not been shown in pursuing the technology described in three patents relating to graphics processing, the Federal Circuit reversed three Board decisions invalidating the patents for anticipation or obviousness.

Concluding that the Patent Trial and Appeal Board erred in holding that diligence had not been shown for three patents relating to graphics processing, the U.S. Court of Appeals for the Federal Circuit has reversed the Board’s decisions of unpatentability. The Federal Circuit reversed the Board’s decisions that three patents owned ATI Technologies ULC for computer-graphics imaging are invalid based on anticipation or obviousness. In recognizing that diligence is not negated if the inventor works on improvements and evaluates alternatives while developing an invention, the Federal Circuit held that the record is clear that ATI exercised the requisite reasonably continuous diligence (ATI Technologies ULC v. Iancu, April 11, 2019, Newman, P.).

ATI Technologies ULC ("ATI") appealed three final Board decisions on petitions for inter partes review filed by LG Electronics, Inc. for U.S. Patent No. 7,742,053, U.S. Patent No. 6,897,871, and U.S. Patent No. 7,327,369. The three patents are called the "Unified Shader Patents." A "shader" as used in this field is a computer-implemented system that specifies how a computer-graphics three-dimensional image is generated and presented on a two-dimensional screen. The Board held all but one of the challenged claims unpatentable as anticipated or obvious, invalidating certain claims. In its final written decision, the Board held that diligence had not been established as to any of the three Unified Shader Patents.

In its decision, the Federal Circuit found that the Boarderred in its application of the law of diligence. The diligence requirement implements the principle that, to antedate a reference, the applicant must not only have conceived the invention before the reference date, but must have reasonably continued activity to reduce the invention to practice. A patent owner need not prove the inventor continuously exercised reasonable diligence throughout the critical period; it must show there was reasonably continuous diligence. Diligence is not negated if the inventor works on improvements and evaluates alternatives while developing an invention.

Here, inventor Laurent Lefebvre described conception and activities developing the technology in the three Unified Shader Patents in his 60-page declaration. The inventor includedalmost 1,300 pages of documentary records showing the work done and by whom and when, including metadata, document logs, and folder histories. Lefebvre testified that over 100 ATI employees worked on this project. The Board identified no delays and no gaps in activity. Rather, the Board complained that Lefebvre had not identified any "unexplained lapses." The Board cited no basis for finding that this technology was not being diligently pursued. The Federal Circuit stated that the purpose of the diligence requirement is to show that the invention was not abandoned or set aside. There was no evidence of abandonment or setting aside of the Unified Shader technology. Lefebvre testified and analyzed the metadata that show diligence from conception to the effective filing date. Lefebvre also provided an annotated calendar for the critical periods. Finding that the record is clear that ATI exercised the requisite reasonably continuous diligence, the Federal Circuit reversed the Board’s three decisions.

This case is No. 2016-2222, 2016-2406, 2016-2608.

Attorneys: Aaron Robert Fahrenkrog (Robins Kaplan LLP) for ATI Technologies ULC. Thomas W. Krause, U.S. Patent and Trademark Office, for Andrei Iancu.

Companies: ATI Technologies ULC

MainStory: TopStory Patent FedCirNews

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