Kutak Rock’s Post-Grant Proceedings (“PGP”) Group won a reversal and remand at the Court of Appeals for the Federal Circuit from a Final Written Decision of the Patent Trial and Appeal Board (“PTAB”) of the U.S. Patent and Trademark Office.  The opinion, Arctic Cat Inc. v. GEP Power Products, Inc., Case No. 18-1520 (Fed. Cir. 2019), clarifies when owners of pre-AIA patents can swear behind prior art.

In a precedential opinion, the Federal Circuit reversed the PTAB on several grounds finding that patent owner Arctic Cat had conceived of the claimed invention prior to the filing date of the key prior art reference, and was diligent in reducing the invention to practice.  The Court made clear that diligence is not automatically defeated by using a third party for product testing:

Lack of diligence cannot be inferred from putting the invention into someone else’s hands for needed testing and awaiting test results for a short period commensurate with the testing need, at least where oversight was diligent.

Jason Jackson, head of Kutak Rock’s PGP Group, argued the case and was assisted by Niall MacLeod, Aaron Myers, and Diane Peterson.