ATI Techs. ULC v. Iancu
United States Court of Appeals for the Federal Circuit
April 11, 2019, Decided
2016-2222, 2016-2406, 2016-2608
[*1364] Newman, Circuit Judge.
ATI Technologies ULC ("ATI") appeals three final decisions of the Patent Trial and Appeal Board ("PTAB" or "Board") on petitions for Inter Partes Review filed by LG Electronics, Inc. ("LGE"). The Board held all but one of the challenged claims unpatentable as anticipated or obvious, invalidating claims 1, 2, and 5-7 of U.S. Patent No. 7,742,053 ("the '053 patent"); claims 1-3, 5, 6, 8-11, 13, 15, 17, and 18 of U.S. Patent No. 6,897,871 ("the '871 patent"); and claims 1 and 2 of U.S. Patent No. 7,327,369 ("the '369 patent"). Claim 20 of the '871 patent was held patentable. The three patents are called the "Unified Shader Patents."
Petitioner LGE cited references against [**2] each of the Unified Shader Patents, and ATI's response was that the invention in each of the three patents preceded the primary reference dates for that patent. In conformity with 37 C.F.R. § 1.131 ("Rule 131"), ATI presented evidence of conception, reduction to practice, and diligence for each patent. The PTAB held separate trials, and received testimony and argument from both sides. The antedating issue was treated in detail in the '053 opinion, and applied to the '871 and '369 patents in separate opinions.
For all three Unified Shader Patents, 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 Unified Shader Patents based on the cited references.
We conclude that the PTAB erred in its application of the law of diligence, and that on the correct law, diligence was shown, thereby antedating the relevant references. The PTO's decisions of unpatentability are reversed.Read The Full CaseNot a Lexis Advance subscriber? Try it out for free.
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920 F.3d 1362 *; 2019 U.S. App. LEXIS 10704 **
ATI TECHNOLOGIES ULC, Appellant v. ANDREI IANCU, UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR OF THE UNITED STATES PATENT AND TRADEMARK OFFICE, Intervenor
Prior History: [**1] Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2015-00325, IPR2015-00326, IPR2015-00330.
patent, diligence, shader, Unified, reduction to practice, vertex, pixel, filing date, invention, antedate, metadata, Folder, plurality, graphics, inputs, documents, inventor, unpatentable, Sequencer, arbiter, testing, threads, block, pages, reasonable diligence, processor, records, Declaration, appearance, primitives
Business & Corporate Compliance, US Patent & Trademark Office Proceedings, Patent Law, US Patent & Trademark Office Proceedings, Patent Law, Jurisdiction & Review, Standards of Review, Substantial Evidence, Evidence, Burdens of Proof, Allocation, Invention Date & Priority, Reduction to Practice, Types of Evidence, Documentary Evidence, Invention Date & Priority, Testimony