Patent Lawyer Blog
In a recent IPR, the PTAB addressed whether a patent application (“Ueda”) filed before the challenged patent (“‘427 Patent”) was considered prior art in light of the Patent Owner’s evidence of an earlier date of invention and the proffered evidence submitted to establish it.
Peloton, as the petitioner, argued that “Ueda was filed on September 19, 2008 [and thus] qualifies as prior art under at least pre-AIA 35 U.S.C. § 102(e).” NEC Corporation, the patent owner, challenged Ueda prior art status by claiming earlier invention, stating that “the inventors of the ‘427 Patent conceived of the invention on or before August 6, 2008, and worked diligently to reduce the invention to practice with the filing of Japan Patent Application No. 2008-294270… on November 11, 2008.”
In addressing the issue, the Board’s analysis focused particularly on the evidence of diligence between conception and reduction to practice, i.e., the critical period. While they found corroborating evidence starting from November 6, 2008, when inventor Kunihiro Taniguchi transmitted a draft application to the Baba law firm, the critical period before this date lacked sufficient documentation.
As the Board explained: “Although Mr. Taniguchi doubtlessly spent substantial time preparing the application he completed on November 6, 2008, there is no corroborating evidence that this work was reasonably continuous during the critical period. As far as the corroborating evidence attests, Mr. Taniguchi could have done no work on the draft until early November, or he could have worked on the draft briefly in August and put it aside until early November.”
The patent owner attempted to demonstrate diligence through evidence of Taniguchi’s other work at NEC and on IPTV projects. However, the Board rejected this argument, noting that these activities failed to show “any nexus between these activities and the challenged claims.”
In its conclusion, the Board determined that “Patent Owner has not met its burden of producing corroborating evidence that the named inventors of the ‘427 patent exercised reasonably continuous diligence during the critical period when Ueda was filed until the constructive reduction to practice that occurred on November 18, 2008.” This ruling effectively established Ueda as valid prior art, allowing it to be used in challenging the patent’s validity.
The decision underscores the evidentiary bar patent owners face when attempting to establish earlier invention dates, particularly regarding the continuous diligence requirement between conception and reduction to practice.
Administrative Patent Judge Christopher L. Odgen authored the decision, joined by Judges Michael Strauss and Charles J. Boudreau. Peloton Interactive, Inc. v. NEC Corporation, Case No. IPR2023-01240, Paper 43 (PTAB Feb. 5, 2025).
The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Greg Cordrey at 949.623.7236 or GCordrey@jmbm.com.