from the United States Patent and Trademark Office, Patent
Trial and Appeal Board in No. IPR2014-00233.
E. Freitas, Freitas Angell & Weinberg LLP, Redwood City,
CA, argued for appellant. Also represented by Daniel J.
Weinberg, Joshua Young.
Deborah E. Fishman, Kaye Scholer LLP, Palo Alto, CA, argued
for appellees. Also represented by Katie Jeannine Lewis
Scott, Marisa Armanino Williams.
Moore, Schall, and O'Malley, Circuit Judges..
Surgical Techniques, Inc. ("PST") appeals from a
decision of the Patent Trial and Appeal Board
("Board") invalidating claims 1, 4-6, 8, 9, 11, 12,
38, 41- 44, 46, 47, and 49 of U.S. Patent No. 6, 030, 384
("'384 patent"). For the reasons set forth
below, we vacate and remand.
appeal arises from the Board's inter part es review
("IPR") decision determining, inter alia,
that each of the claims at issue are anticipated or would
have been obvious over Japanese Application Publication No.
H10-33551 A ("JP '551"). The Board determined
that JP '551 qualified as prior art to the '384
patent under 35 U.S.C. § 102(a). First, the Board
rejected PST's argument that the Board could not rely on
JP '551 as filed because the petitioners, Olympus
America, Inc. and Olympus Medical Systems Corp.
(collectively, "Olympus"), failed to translate the
bibliographic page containing the publication date. Second,
the Board determined that PST failed to antedate JP '551
because it had not proven that the inventor of the '384
patent was reasonably diligent in reducing his invention to
practice. After concluding that JP '551 was prior art,
the Board examined the prior art under its claim construction
and determined JP '551 anticipated or rendered obvious
the claims at issue.
appeal addresses all three aspects of the Board's
decision. We have jurisdiction under 28 U.S.C. §
Partial Translation of JP '551
to 37 C.F.R. § 42.63(b), the Board requires a party
relying on a non-English document to submit "a
translation of the document into English and an affidavit
attesting to the accuracy of the translation." PST
argues that Olympus' failure to translate the
bibliographic page of JP '551 rendered their submission
defective and that the Board violated its own regulations by
relying on Olympus' partially-translated submission. PST
argues that the bibliographic page contained the publication
date, and since that page was not translated, Olympus did not
present sufficient evidence for the Board to determine that
JP '551 was prior art to the '384 patent.
Board is not free to disregard its own regulations. Nor can
it mandate compliance by only some parties. But in this case,
even if the Board erred by accepting Olympus' submission
of JP '551, its error is harmless.
concedes that the only relevant information on the
untranslated page is the publication date, and the date is
discernable from the face of the untranslated page.
See J.A. 13 (citing Manual of Patent Examining
Procedure § 901.05(a) (describing how to convert
Japanese format publication date information to Gregorian
calendar date information)). As noted by the Board, the
translator's certification further attested that JP
'551 was published on February 10, 1998. J.A. 12-13. PST
does not dispute that JP '551 was published on this date,
nor does it dispute the remainder of the translation. For
these reasons, PST has not established that the Board's
acceptance of a not fully translated version of JP '551
was anything other than harmless error.
Antedating JP '551
section 102(g) allows a patent owner to antedate a reference
by proving earlier conception and reasonable diligence in
reducing to practice. Monsanto Co. v. Mycogen Plant Sci.,
Inc., 261 F.3d 1356, 1362 (Fed. Cir. 2001). Reasonable
diligence must be shown throughout the entire critical
period, which begins just prior to the competing
reference's effective date and ends on the date of the
invention's reduction to practice. Id. at 1363.
Camran Nezhat, the inventor of the '384 patent, hired
James Heslin to draft and file the application that would
issue as the '384 patent. On January 28, 1998, Mr. Heslin
sent an initial draft of the application to Dr. Nezhat. Mr.
Heslin later filed the application with the Patent and
Trademark Office ("PTO") on May 1, 1998. During
this 93-day lapse of time-and only thirteen days after Dr.
Nezhat received the initial draft application- JP '551
published. To show diligence in reduction to practice, PST
must prove that Dr. Nezhat was reasonably diligent during the
critical period, which began on February 9, 1998, one day
prior to JP '551's publication date, and ended on May
1, 1998, the date the invention was constructively reduced to
practice by filing the application that resulted in the
'384 patent with the PTO.
Nezhat testified that he was reasonably diligent in reducing
his invention to practice from February 9 to May 1, 1998. He
testified that, although he did not recall all of his daily
activities, he "diligently worked with Mr. Heslin
between February 1, 1998 and May 1, 1998, within the
reasonable limits of my busy medical practice and teaching
schedule[.]" J.A. 686. He testified that throughout
these months, his medical practice required him to work
roughly 80 hours per week, during which he would perform
approximately four to six surgeries. Id. He
testified that he submitted comments on the initial draft
application on March 2, received questions from Mr. Heslin on
or around March 4 and 12, participated in a conference with
Mr. Heslin on March 16, and received a second draft
application from Mr. Heslin on April 13. J.A. 686-87. He
testified that he "again carefully reviewed the second
draft" before it was finalized and filed on May 1. J.A.
inventor's testimony regarding his reasonable diligence
must be corroborated by evidence. Brown v. Barbacid,
436 F.3d 1376, 1380 (Fed. Cir. 2006). A "variety of
activities" may corroborate an inventor's testimony
of reasonable diligence and such corroborating evidence is
considered "as a whole" under a rule of reason.
Id. To corroborate Dr. Nezhat's testimony, PST
introduced a declaration from Mr. Heslin, letters between Dr.
Nezhat and Mr. Heslin, and Mr. Heslin's billing records.
Heslin recounted the same dates of activity as Dr. Nezhat and
added that he reviewed and revised the initial draft
application on April 7. J.A. 757-58. He characterized Dr.
Nezhat as a "careful and serious client" who
"communicated with me, in writing and in person, to
finalize the application." J.A. 758. He testified that
he and Dr. Nezhat "put in a significant amount of effort
and work into revising and finalizing the patent application
between February 1 and May 1." J.A. 758-59. He testified
that during the relevant time period, he "maintained a
very active practice" and typically worked 50 hours or
more a week. J.A. 756, 758.
Heslin's declaration appended a number of exhibits as
support for his testimony. A March 12 letter from Mr. Heslin
thanked Dr. Nezhat for his "facsimile of March 2, 1998,
with comments on the initial draft." J.A. 927. The
letter asked for Dr. Nezhat's "further comments on
electrode surface area" and requested that they meet
"to discuss finalizing the draft." Id. Mr.
Heslin's billing records indicate he reviewed Dr.
Nezhat's comments on March 4 and that he met with Dr.
Nezhat on March 16. J.A. 604. The billing records also
indicate Mr. Heslin revised the draft application on April 7.
Id. An April 13 letter from Mr. Heslin to Dr. Nezhat
enclosed a second draft application and expressed that he
"tried to reflect the comments you made when we last
met." J.A. 607. The letter asked for Dr. Nezhat's
"further comments so that [the application] can be
finalized and filed in the near future." Id.
Mr. Heslin filed the application on May 1. J.A. 604, 634.
Board accepted Dr. Nezhat's testimony and corroborating
evidence but determined that PST was not "sufficiently
specific as to facts and dates" of Dr. Nezhat's
diligence during three portions of the critical period: (1)
February 10 to March 1; (2) March 12 to March 15; and (3)
April 13 to May 1. J.A. 21-22. The Board therefore concluded
that PST failed to demonstrate Dr. Nezhat's
"continuous exercise of reasonable diligence for the
entire critical period." J.A. 22.
a patent antedates a reference is a question of law based on
subsidiary findings of fact. In re Steed, 802 F.3d
1311, 1316-17 (Fed. Cir. 2015). The issue of reasonable
diligence "turns on the factual record, and we review
Board determinations as to diligence for support by
substantial evidence in the record." Id. at
1317. Throughout its opinion, the Board repeatedly
characterized PST's burden as requiring proof of Dr.
Nezhat's "continuous exercise of reasonable
diligence." J.A. 16 (emphasis added); see also
id. (requiring proof of "continuous and
corroborated diligence"); J.A. 18 ("Patent Owner
does not provide sufficient evidence to demonstrate . . .
that Dr. Nezhat continuously exercised reasonable diligence
during the entire critical period."); J.A. 19
("[T]he evidence, taken as a whole, does not support
Patent Owner's contention that there was a continuous
exercise of reasonable diligence during the entire critical
period."); J.A. 22 ("Patent Owner does not provide
sufficient evidence to demonstrate Dr. Nezhat's
continuous exercise of reasonable diligence . . . .").
The standard demanded by the Board is too exacting and in
conflict with our precedent.
patent owner need not prove the inventor
continuously exercised reasonable diligence
throughout the critical period; it must show there was
reasonably continuous diligence. See, e.g.,
Tyco Healthcare Grp. v. Ethicon Endo-Surgery, Inc.,
774 F.3d 968, 975 (Fed. Cir. 2014); Monsanto, 261
F.3d at 1370. Under this standard, an inventor is not
required to work on reducing his invention to practice every
day during the critical period. See Monsanto, 261
F.3d at 1369. And periods of inactivity within the critical
period do not automatically vanquish a patent owner's
claim of reasonable diligence. For example, in
Monsanto, we held that substantial evidence
supported the jury's presumed finding that an inventor
was reasonably diligent where there was no corroborating
evidence of any activity for a series of months. Id.
at 1370. We explained that, notwithstanding the absence of
daily notebook entries and the resulting gaps during the
critical period, "the work involved in the experiments
was continuous in nature" and therefore the reduction to
practice was "reasonably continuous." Id.
In Brown v. Barbacid, we held that the patent
owner's evidence of diligence during a 31-day critical
period was "sufficient to show substantially continuing
activity" despite the lack of activity during six
single-day gaps. 436 F.3d at 1380-83. Our holdings in these
cases are consistent with the purpose of the diligence
inquiry. In determining whether an invention antedates
another, the point of the diligence analysis is not to scour
the patent owner's corroborating evidence in search of
intervals of time where the patent owner has failed to
substantiate some sort of activity. It is to assure that, in
light of the evidence as a whole, "the invention was not
abandoned or unreasonably delayed." Id. at
1379. That an inventor overseeing a study did not record its
progress on a daily, weekly, or even monthly basis does ...