ARCTIC CAT INC. v. GEP POWER PRODUCTS, INC.
Before Prost, Reyna, Taranto. Appeal from the Patent Trial and Appeal Board.
Summary: Where the preamble of a claim merely identifies an intended use and does not impose a structural requirement, and only the body of the claim identifies an improvement, the applicant’s choice not to use the transitional phrase “wherein the improvement compromises” is also a “powerful reason” to deny the preamble any limiting effect. Further, lack of diligence in reducing an invention to practice cannot be inferred when the invention was put into someone else’s hands for needed testing and there was diligent oversight.
GEP filed petitions requesting inter partes reviews of two patents owned by Arctic Cat. The patents at issue described an electrical-connection box for distributing power to various electrical components. The Board granted the petitions and found both patents unpatentable. Arctic Cat challenged the Board’s findings that various claim preambles were not limiting and that a reference upon which the Board relied, the Boyd patent, was prior art.
The preamble in the patents at issue recites “[a] personal recreational vehicle.” The Court agreed with the Board that the reference to “personal recreational vehicle” merely identified an intended use. Further, Arctic Cat did not show that this use imposed any structural requirement on the claimed module. A preamble is not limiting where a patentee describes a structurally complete invention in the claim body and uses the preamble only to state an intended use. In addition, Arctic Cat did not use the transitional phrase “wherein the improvement comprises.” Thus, the Court agreed with the Board that the preambles did not limit the claims in the patents at issue.
The Federal Circuit reversed the Board’s decision that the Boyd patent was prior art to the patents at issue. Boyd was filed about seven months before the filing date of the first patent at issue, to which the second patent at issue claims priority. Antedating of Boyd required that the inventor conceived of the inventions before the filing date of Boyd and diligently reduced the inventions to practice. The parties did not dispute that the inventor conceived of the inventions prior to the filing date of Boyd. Thus, the only issue was whether the inventor was diligent in reducing the inventions to practice. The Federal Circuit noted that diligence “need not be perfectly continuous – only reasonably continuous.” The Court stated that the Board applied too rigid of a standard for diligence. The inventor submitted a declaration that included a timeline with citations to exhibits to demonstrate his efforts. The Federal Circuit noted that the gaps in the activity described in the timeline were explained by the testing of the inventions by another party.