Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper No. 27
`Entered: December 5, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GEP POWER PRODUCTS, INC.,
`Petitioner,
`
`v.
`
`ARCTIC CAT INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01385
`Patent 7,072,188 B2
`____________
`
`
`Before MICHAEL R. ZECHER, JENNIFER S. BISK, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper No. 27
`Entered: December 5, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GEP POWER PRODUCTS, INC.,
`Petitioner,
`
`v.
`
`ARCTIC CAT INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01385
`Patent 7,072,188 B2
`____________
`
`
`Before MICHAEL R. ZECHER, JENNIFER S. BISK, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`IPR2016-01385
`Patent 7,072,188 B2
`
`
`I.
`
`INTRODUCTION
`
`GEP Power Products, Inc. (“Petitioner”) filed a Petition pursuant to
`35 U.S.C. §§ 311–19 requesting an inter partes review of claims 1–23 of
`U.S. Patent No 7,072,188 B2, issued on July 4, 2006 (Ex. 1001, “the ’188
`patent”). Paper 1 (“Petition” or “Pet.”). Arctic Cat Inc. (“Patent Owner”)
`filed a Preliminary Response. Paper 9 (“Prelim. Resp.”). Applying the
`standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a
`reasonable likelihood that Petitioner would prevail with respect to at least
`one challenged claim, we granted Petitioner’s request and instituted an inter
`partes review of all challenged claims. Paper 11, 24.
`Following institution, Patent Owner filed a Response to the Petition
`(Paper 13, “PO Resp.”), and Petitioner filed a Reply (Paper 16, “Pet. Reply).
`In addition, Petition filed a Motion to Exclude Evidence. Paper 20 (“Mot. to
`Exclude”). Patent Owner filed an Opposition to the Motion to Exclude
`(Paper 21), and Petitioner filed a Reply in Support of its Motion to Exclude
`(Paper 23). A final oral hearing was held on September 27, 2017. A
`transcript of that hearing has been entered in the record. Paper 26 (“Hr’g
`Tr.”).
`
`For the reasons discussed below, Petitioner has shown by a
`preponderance of the evidence that all challenged claims of the ’188 patent
`are unpatentable.
`
`
`
`II. BACKGROUND
`A. The ʼ188 Patent (Ex. 1001)
`The ʼ188 patent is titled “Power Distribution Module for Personal
`Recreational Vehicle.” The Abstract describes the subject matter as follows:
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`A power distribution module for a personal recreational
`vehicle includes a housing and a cover. The housing defines an
`interior and includes a wall having an array of receptacle
`openings. The receptacle openings are adapted to receive and
`secure electrical components inside the housing. A distribution
`harness includes a plurality of electrical conductors and is
`coupled to the housing wherein the electrical conductors are in
`electrical communication with the electrical components inside
`the housing. The power distribution module can optionally
`include a decal to assist quick and accurate placement of the
`electrical components during the manufacturing process. A
`method for producing a personal recreational vehicle having a
`standardized housing over a range of models. The housing
`includes a component arrangement guide for locating and
`installing electrical components.
`
`Ex. 1001, Abstract.
`
`The ’188 patent states that “[a]ll personal recreational vehicles include
`some type of power distribution system for routing and control of power and
`signals throughout the vehicle.” Id. at 1:44–46. According to the ’188
`patent, however, different types of components (e.g., fuses, diodes, and
`relays) must be housed in different locations. Id. at 1:46–50. The ’188
`patent also notes that standardization of components within and across a
`product line can reduce manufacturing costs. Id. at 1:38–43. Thus, the ’188
`patent states that “it is desirable to devise a means by which the power
`distribution module can be easily standardized for manufacturing,” and “to
`have a power distribution module that includes components other than
`fuses.” Id. at 1:51–55.
`
`B. Illustrative Claim
`Claims 1, 11, and 19 are independent claims. Claim 1 is illustrative of
`the claims at issue and is reproduced below (with some paragraphing added):
`
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`1. A power distribution module for a personal
`recreational vehicle comprising:
`a housing defining an interior, including a component
`attachment portion and a cover,
`the cover comprising a first surface substantially
`surrounding the perimeter thereof, the first surface conforming
`to a first edge surrounding the perimeter of the component
`attachment portion,
`the component attachment portion comprising a fastener
`secured thereto proximate the first edge thereof, the fastener
`selectively securing the component attachment portion to the
`cover having the first surface of the cover in engagement with
`the first edge of the component attachment portion,
`the housing further including a plurality of receptacle
`openings in a wall in the component attachment portion,
`wherein the receptacle openings are spaced-apart in rows
`and columns of openings, the spacing between the rows and the
`spacing between the columns being substantially the same for
`receiving and securing at least one electrical component within
`the housing across multiple rows or across multiple columns of
`openings; and
`a distribution harness having a plurality of electrical
`conductors, wherein the electrical conductors electrically
`cooperate with the receptacle openings to connect to the at least
`one electrical component, wherein the conductors are adapted
`to distribute power.
`Id. at 7:5–30.
`
`
`
`C. Related Proceedings
`Petitioner and Patent Owner identify a related litigation in the District
`of Minnesota involving the ʼ188 patent titled: Arctic Cat Inc. v. Polaris
`Industries Inc., No. 0:16-cv-00008-WMW-HB (D. Minn.). Pet. 1; Paper 6,
`2. Petitioner indicates that it “supplies a power distribution module to [the
`defendant in that suit] that Patent Owner has accused of infringing the ‘188
`patent.” Pet. 1.
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`D. Level of Skill in the Art
`Petitioner contends that “a person having ordinary skill in the art
`would have at least a bachelor of science degree in mechanical engineering
`with at least two to five years of work experience relating to designing
`electrical control system components.” Pet. 19. Patent Owner does not
`address this definition of the person of ordinary skill in the art in its Patent
`Owner Response. See generally PO Resp. Patent Owner’s expert, Ralph
`Wilhelm, Jr. Ph.D., testifies that a person of ordinary skill in the art could
`have a bachelor’s degree in either electrical or mechanical engineering with
`the same amount of experience proposed by Petitioner. Ex. 2001 ¶ 8.
`Because this definition of the level of skill in the art is consistent with the
`’188 patent and the asserted prior art, we agree with Patent Owner and
`determine a person of ordinary skill in the art would have at least a bachelor
`of science degree in mechanical engineering or electrical engineering with at
`least two to five years of work experience relating to designing electrical
`control system components. Thus, we adopt Patent Owner’s definition and
`apply it to our evaluation below, but note that our conclusions would remain
`the same under Petitioner’s definition.
`E. References and Other Evidence
`We instituted trial based on the following references:
`1. “Boyd” (U.S. Patent No. 6,850,421 B2; filed April 1, 2002; issued
`Feb. 1, 2005) (Ex. 1002);
`2. “Svette” (U.S. Patent No. 5,354,211; issued Oct. 11, 1994)
`(Ex. 1005); and
`3. “Caveney” (U.S. Patent No. 3,660,869; issued May 9, 1972)
`(Ex. 1006).
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`
`In addition, Petitioner submitted an expert declaration from Mr.
`Lawrence R. Happ (Ex. 1007, “Happ Decl.”).
`Patent Owner relies on an expert declaration of Ralph Wilhelm, Jr.
`Ph.D. (Ex. 2001, “Wilhelm Decl.”), and declarations of Darrel Janisch (the
`named inventor of the ’188 patent), Del Christianson, and Kenneth Kalsnes
`(Ex. 2002; Ex. 2003; Ex. 2034 respectively) all filed with its Patent Owner
`Response. Patent Owner also filed a Second Declaration of Darrel Janisch
`(Ex. 2036) in support of its Opposition to the Motion to Exclude. Excerpts
`from the deposition transcripts for Darrel Janisch (Ex. 1009) and Ralph
`Wilhelm, Jr. Ph.D. (Ex. 1010) have also been filed.
`F. Grounds Asserted
`Trial was instituted on the following grounds:
`
`
`
`Claims
`Reference(s)
`Basis
`35 U.S.C. § 102(e)1 1–6, 11, 19, 22, and
`Boyd
`23
`Boyd, Svette, and Caveney
`12–18
`Svette
`1–12 and 19–23
`
`
`
`
`35 U.S.C. § 103(a)
`35 U.S.C. § 103(a)
`
`III. ANALYSIS
`
`
`
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are
`construed according to their broadest reasonable interpretation in light of the
`
`
`1 The Leahy–Smith America Invents Act, Pub. L. No. 112–29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the ’188
`patent has an effective filing date before the effective date of the applicable
`AIA amendments, we refer to the pre–AIA versions of 35 U.S.C. §§ 102 and
`103.
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`specification of the patent in which they appear. See 37 C.F.R. § 42.100(b);
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under
`that standard, claim terms are generally given their ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art, in the
`context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
`1257 (Fed. Cir. 2007).
`In our Institution Decision, we determined that the “distribution
`harness” as recited in the challenged claims does not encompass the wires
`(i.e., the recited “conductor cables”) standing alone, but that further
`construction of that term was not necessary at that stage of the proceeding.
`Paper 11, 5–7. We also determined that the preambles of independent
`claims 1, 11, and 19 are not limiting. Id. at 7–8.
`In its Patent Owner Response, Patent Owner again raises these two
`claim construction issues. PO Resp. 4–10. Beyond the two issues raised by
`Patent Owner, we determine explicit construction of any other term is not
`necessary to resolve the issues before us. See Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir.
`2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed.
`Cir. 1999).
`
`1. “distribution harness”
`Patent Owner contends the recited “distribution harness” is more than
`a bundle of wires and should be construed as an “apparatus that holds wires
`together.” PO Resp. 4. In support, Patent Owner relies on the claim
`language, which recites “a distribution harness having a plurality of
`electrical conductor cables,” and the ’188 specification. Id. at 4–6. Patent
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`Owner also relies on the testimony of its expert, Dr. Wilhelm. Id. at 6
`(citing Ex. 2001 ¶ 17).
`Petitioner contends that the recited “distribution harness”
`encompasses a bundle of wires for which an additional apparatus is not
`required. Pet. Reply 18–19. In support, Petitioner relies on a statement in
`the ’188 specification that “[t]he distribution harness 260 includes a plurality
`of electrical conductors 262, which optionally can be housed within a sheath
`269 to keep the conductors 262 in a bundle.” Id. at 19 (quoting Ex. 1001,
`5:13–15). Petitioner also states that the parties’ constructions of this term
`may be a “distinction without a difference” because Patent Owner’s expert
`admitted that structures for securing wires were known at the time of the
`’188 invention and a person of ordinary skill in the art would have
`understood benefits of using a wire harness. Id. at 19–21 (citing Ex. 1010,
`50:19–51:7, 59:4–24).
`We determine that Patent Owner’s proposed construction is consistent
`with our preliminary construction that a “distribution harness” does not
`encompass the wires standing alone, whereas Petitioner’s proposed
`construction is not. As Patent Owner notes, independent claim 1 recites
`“a distribution harness having a plurality of electrical conductors.” Ex.
`1001, 7:26–27. Independent claims 11 and 19 recite a similar limitation. Id.
`at 8:8–9, 8:66–67. Although the specification notes that “[t]he distribution
`harness 260 includes a plurality of electrical conductors 262, which
`optionally can be housed within a sheath 269 to keep the conductors 262 in a
`bundle” (Ex. 1001, 5:13–15 (emphasis added)), we agree with Patent Owner
`that construing the “distribution harness” as encompassing the wires (i.e., the
`
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`recited “conductor cables”) standing alone would render the term
`“distribution harness” superfluous.
`Moreover, the ’188 specification is consistent with Patent Owner’s
`construction. Petitioner relies on the statement discussed above in the ’188
`specification that “[t]he distribution harness 260 includes a plurality of
`electrical conductors 262, which optionally can be housed within a sheath
`269 to keep the conductors 262 in a bundle” in support of its proposed
`construction of a “distribution harness” as a “bundle of wires.” Pet. Reply
`19 (quoting Ex. 1001, 5:13–15). We note, however, that even without
`sheath 269, the wires in Figure 3 remain held together by other apparatuses
`(e.g., cable ties 264, 266, and 268). Ex. 1001, Fig. 3, 5:26–40. At the oral
`hearing, Petitioner’s counsel contended that twisting the wires together with
`no separate apparatus would be a “distribution harness,” but did not provide
`any further support in the record for such a position. Hr’g Tr. 63:9–64:11.
`We find no support in the record for twisted wires standing alone being a
`“distribution harness.”
`For the reasons discussed above, we determine Patent Owner’s
`proposed construction of “distribution harness” is consistent with our
`preliminary construction and with the intrinsic evidence. Accordingly, we
`construe the recited “distribution harness” as an apparatus that holds wires
`(i.e., the recited “conductor cables”) together.
`2. Claim Preambles
`The preambles of independent claims 1 and 11 each recite “[a] power
`distribution module for a personal recreational vehicle.” Ex. 1001, 7:5–6,
`60–61. The preamble of claim 19 recites “[a] power distribution module.”
`Id. at 8:53. Patent Owner contends the preambles of independent claims 1,
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`11, and 19 are limiting for the following reasons: “(1) the specification
`consistently describes the invention of the ‘188 patent as a PDM [power
`distribution module] for a vehicle; (2) a [person of ordinary skill in the art]
`would understand the preambles as limiting in view of the specification; and
`(3) Petitioner treats the preambles as limiting.” PO Resp. 6. In particular,
`Patent Owner contends “[t]he preambles recite limitations and give life,
`meaning and vitality to the claims, and so should be read as limiting.” Id. at
`7. In support, Patent Owner cites portions of the specification that mention a
`“personal recreational vehicle.” Id. at 7–9 (providing numerous citations to
`Ex. 1001). Patent Owner also contends Petitioner treats the claim preambles
`as limiting “by mapping the preambles to alleged prior art.” Id. at 9. Patent
`Owner further relies on Dr. Wilhelm’s testimony that “a person of ordinary
`skill in the art would give meaning to the ‘vehicle’ terms in the preambles in
`view of the specification.” Id. at 9–10 (citing Ex. 2001 ¶ 22).
`Petitioner contends the claim preambles are not limiting and that Dr.
`Wilhelm’s testimony does not support otherwise. Pet. Reply 22–23. We
`agree with Petitioner.
`“[A] preamble generally is not limiting when the claim body describes
`a structurally complete invention such that deletion of the preamble phrase
`does not affect the structure or steps of the claimed invention.” Catalina
`Marketing Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir.
`2002). In addition, “preambles describing the use of an invention generally
`do not limit the claims because the patentability of apparatus or composition
`claims depends on the claimed structure, not on the use or purpose of that
`structure.” Id.
`
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`As an initial matter, Patent Owner’s counsel conceded at the oral
`hearing that independent claim 19 does not recite a personal recreational
`vehicle, and Patent Owner does not seek to read that limitation into claim 19.
`Hr’g Tr. 55:4–56:9. We agree and find that claim 19 does not recite a
`personal recreational vehicle, and we do not read any such limitation into
`that claim.
`We also determined in our institution decision that the claim bodies of
`claims 1, 11, and 19 describe structurally complete inventions. Paper 11, 8.
`We are not persuaded to disturb that determination here. In particular, those
`claims recite limitations including, inter alia, a housing with a component
`attachment portion and a cover, a plurality of receptacles in the component
`attachment portion, and a distribution harness having a plurality of electrical
`conductors that electrically cooperate with the receptacles to connect to at
`least one electrical component. The bodies of those claims do not recite a
`personal recreational vehicle. Thus, we determine the claim body of each
`independent claim “describes a structurally complete invention such that
`deletion of the preamble phrase does not affect the structure or steps of the
`claimed invention.” See Catalina, 289 F.3d at 809. In addition, we
`determine that “for a personal recreational vehicle” in the preambles of
`claims 1 and 11 recites only an intended use for the otherwise complete
`claimed apparatus.
`We further find that Dr. Wilhelm’s testimony is entitled to little
`weight in addressing this issue. Dr. Wilhelm testified that a person of
`ordinary skill in the art “would give meaning to the ‘vehicle’ terms in the
`preambles since the specification consistently describes the invention in the
`context of a recreational vehicle with a PDM or as a PDM for a recreational
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`vehicle.” Ex. 2001 ¶ 22. We find that whether a person of ordinary skill in
`the art would give meaning to terms in a preamble is not the proper inquiry
`to determine whether those terms in a preamble limit the scope of the claim.
`Mr. Wilhelm agreed at his deposition that “for a personal recreation vehicle”
`in the preambles of claims 1 and 11 reflected an intended use. Ex. 1010,
`34:5–15. Mr. Wilhelm also conceded he had not addressed in his
`declaration whether those claims recite structurally complete inventions. Id.
`at 36:17–25.
`We are also not persuaded that we should alter our preliminary
`determination on this issue based on Petitioner’s alleged treatment of the
`claim preambles as limiting “by mapping the preambles to alleged prior art,”
`as Patent Owner contends. PO Resp. 9. We agree with Patent Owner that
`Petitioner has the burden of persuasion to establish unpatentability (id.), but
`we do not view Petitioner’s treatment of the preambles in its analysis of its
`unpatentability grounds as a binding admission that those preambles are
`limiting.
`Finally, we disagree with Patent Owner that the axiom that different
`words in a claim have different meanings requires us to find the preambles
`of claims 1 and 11 are limiting (id. at 10). Specifically, although we agree
`with Patent Owner that not all of the claim preambles recite a “vehicle”
`limitation (id.), the fact that the patent drafter chose to include an intended
`use in some claims and not others does not convert that intended use into a
`claim limitation.
`For the reasons discussed above, we conclude that the preambles of
`claims 1, 11, and 19 are not limiting.
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`B. Asserted Anticipation by Boyd
`1. Overview of Boyd
`Boyd is titled “Fuse Relay Box Apparatus, Methods and Articles of
`Manufacture,” and the application leading to Boyd was filed on April 1,
`2002. Ex. 1002, at [54], [22]. Petitioner contends Boyd is prior art under 35
`U.S.C. § 102(e). Pet. 13.
`Boyd discloses a “fuse relay box” with a cover and base, where the
`base includes “a number of channels adapted for use by either a fuse or
`relay.” Ex. 1002, Abstract. Figures 1 and 2 of Boyd as annotated by
`Petitioner (Pet. 14) are reproduced below.
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`Annotated Figure 1 of Boyd depicts a preferred embodiment of Boyd’s fuse
`relay box with electrical components installed therein. Ex. 1002, 2:65–66.
`Annotated Figure 2 of Boyd depicts the underside of base 20 with a matrix
`of channels 30. Id. at 3:51–55.
`2. Status of Boyd as Prior Art
`Petitioner has the burden of persuasion to prove unpatentability by a
`preponderance of the evidence, and that burden never shifts to Patent Owner.
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378
`(Fed. Cir. 2015). Petitioner also has the burden to show that a reference is
`prior art to certain claims under a relevant section of 35 U.S.C. § 102. Id.
`Here, it is undisputed that Boyd has a filing date of April 1, 2002, and ’188
`patent has a filing date of October 29, 2002. Ex. 1001, at [22]; Ex. 1002, at
`[22]; Pet. 12–13; PO Resp. 11. In addition, Petitioner acknowledges that the
`Examiner issued rejections over Boyd during the prosecution of the ’188
`patent. Pet. 5, 8. In response to those rejections, Patent Owner submitted
`two declarations from the named inventor of the ’188 patent, Darrel Janisch,
`under 37 C.F.R. § 1.131, allegedly swearing behind Boyd. Ex. 1008, July
`22, 2004 Janisch Decl., and Feb. 28, 2006 Janisch Decl. In the Petition,
`Petitioner alleged that these declarations are insufficient. Pet. 11–13. We
`determine that Petitioner met its initial burden by alleging Boyd is prior art
`under 35 U.S.C. § 102(e) and calling into question the sufficiency of Mr.
`Janisch’s declarations.
`Following institution, Patent Owner contends that Boyd is not prior
`art because (1) Patent Owner can antedate Boyd and (2) Boyd was not
`created “by another” under 35 U.S.C. § 102(e). PO Resp. 11–46. We
`address each of these contentions below.
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`a. Antedating Boyd
`Patent Owner contends Boyd is not prior art because it can antedate
`Boyd. PO Resp. 11–29. After Petitioner met its initial burden to show Boyd
`is prior art, as discussed above, the burden of production shifts to Patent
`Owner to argue or produce evidence that the asserted reference is not prior
`art. Dynamic Drinkware, 800 F.3d at 1380. If Patent Owner meets that
`burden of production, the burden shifts back to Petitioner. Id. We
`emphasize that the ultimate burden of establishing unpatentability always
`remains with Petitioner.
`To antedate, Patent Owner contends Darrel Janisch, the named
`inventor of the ’188 patent, conceived of the inventions claimed in the ’188
`patent prior to Boyd’s filing date (PO Resp. 12–24) and that Mr. Janisch was
`diligent in reducing these inventions to practice through the constructive
`reduction to practice date (id. at 24–29). We have reviewed both parties’
`arguments and evidence, and we determine, viewing the record as a whole,
`that the evidence supports a determination that Patent Owner has not
`antedated Boyd.
`An inventor may swear behind a reference if he was the first to
`conceive of an invention, and then connects the conception of his invention
`with its reduction to practice by reasonable diligence on his part, such that
`conception and diligence are substantially one continuous act. Mahurkar v.
`C.R. Bard, Inc., 79 F.3d 1572, 1577 (Fed. Cir. 1996). A party alleging
`diligence must account for the entire critical period. Griffith v. Kanamaru,
`816 F.2d 624, 626 (Fed. Cir. 1987); Gould v. Schawlow, 363 F.2d 908, 919
`(CCPA 1966). While “[a] patent owner need not prove the inventor
`continuously exercised reasonable diligence throughout the critical period[,]
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`it must show there was reasonably continuous diligence.” Perfect Surgical
`Techniques, Inc. v. Olympus Am., Inc., 841 F.3d 1004, 1009 (Fed. Cir. 2016)
`(citing Tyco Healthcare Grp. v. Ethicon Endo-Surgery, Inc., 774 F.3d 968,
`975 (Fed. Cir. 2014); Monsanto Co. v. Mycogen Plant Sci., Inc., 261 F.3d
`1356, 1370 (Fed. Cir. 2001)). For reasonably continuous diligence, an
`inventor is not required to work on reducing his invention to practice every
`day during the critical period, and periods of inactivity are not automatically
`fatal to a patent owner’s claim of reasonable diligence. Id. The Federal
`Circuit has also counseled that the point of this analysis is not to scour patent
`owner’s corroborating evidence to identify gaps in activity, but rather to
`view the evidence as a whole to assure that the invention was not abandoned
`or unreasonably delayed. Id.
`A party alleging diligence, however, must provide corroboration with
`evidence that is specific both as to facts and dates. Gould, 363 F.2d at 920;
`Kendall v. Searles, 173 F.2d 986, 993 (CCPA 1949). A “rule of reason”
`analysis is applied to determine whether the inventor’s testimony has been
`corroborated, and under such an analysis, “[a]n evaluation of all pertinent
`evidence must be made so that a sound determination of the credibility of the
`inventor’s story may be reached.” Price v. Symsek, 988 F.2d 1187, 1195
`(Fed. Cir. 1993). The rule of reason, however, does not dispense with the
`need for corroboration of diligence that is specific as to dates and facts.
`Gould, 363 F.2d at 920; Kendall, 173 F.2d at 993; see Coleman v. Dines,
`754 F.2d 353, 360 (Fed. Cir. 1985).
`Patent Owner provides a declaration from Mr. Janisch that addresses
`both conception and diligence in reducing the inventions covered by the
`claims of the ’188 patent to practice. Ex. 2002. Mr. Janisch testifies that he
`
`
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`conceived of the PDM described and claimed in the ’188 patent at least as
`early as April 1, 2002. During the relevant time period, Mr. Janisch was an
`employee at Arctic Cat, and he testifies that Arctic Cat contracted with Tyco
`Electronics, Inc. to manufacture the PDM according to his designs. Id. ¶ 11.
`For conception, Mr. Janisch provides a table that correlates some of the
`claim limitations to statements in Patent Owner’s exhibits. Id. ¶ 13. Mr.
`Janisch further contends that the PDM was diligently reduced to practice
`from just before April 1, 2002 until October 29, 2002, the constructive
`reduction to practice of his inventions. Id. ¶¶ 15, 16. He testifies that he,
`and others at Arctic Cat, directed Tyco to diligently reduce the PDM to
`practice. Id. ¶ 17. Mr. Janisch provides a table showing activities for date
`ranges covering the entire critical period. Id. ¶ 19.
`Patent Owner also provides declarations from two Arctic Cat
`employees, Mr. Christianson and Mr. Kalsnes. Regarding diligence, Mr.
`Christianson testifies:
`I worked with Darrel [Janisch] and his team from just before
`April 1, 2002 through October 29, 2002. During that time, I
`observed Darrel and his team diligently work on the PDM and
`use Tyco to make and test prototypes and various components.
`I participated in shop discussions, saw technical drawings, and
`was involved in testing for Darrel’s PDM prototypes during that
`time.
`Ex. 2003 ¶ 14. Mr. Kalsnes’ testimony does not mention Tyco. See Ex.
`2034. He testifies that: “I worked with Darrel [Janisch] and his team from
`before April 1, 2002 through October 29, 2002. I observed Darrel and his
`team diligently work on the PDM during that time. I participated in
`discussions and meetings and reviewed layouts regarding the PDM.” Id. ¶ 9.
`Patent Owner further submits a number of documents that it alleges
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`corroborate Mr. Janisch’s conception and diligence to reduction to practice.
`See Exs. 2004–2033.
`We determine Patent Owner’s evidence is insufficient to show
`reasonably continuous diligence throughout the entire critical period. In
`particular, Mr. Janisch’s declaration purports to show continuous diligence
`during the critical period in the table in paragraph 19 (Exhibit 2002).
`However, each row in that table refers to a date range and generally
`describes documents that bookend the date range, without sufficiently
`detailed explanation of events occurring between the bookend
`communications.
`For example, for the period of April 1, 2002 to April 29, 2002, Mr.
`Janisch cites documents dated April 1 (Ex. 2013), April 2 (Ex. 2014), and
`April 29 (Ex. 2015). In Exhibit 2013 (April 1), Mr. Janisch sends Tyco
`approval for a PDM specification and test proposal dated March 15, 2002.
`The record does not include that specification and proposal, but Mr. Janisch
`testifies “that further testing was conducted.” Ex. 2002 ¶ 19. Exhibit 2014
`reflects a drawing dated April 2, 2002, which Mr. Janisch testifies shows an
`embodiment “that was being developed at that time,” but other than further
`testing, Mr. Janisch does not identify any development activities that were
`occurring. In Exhibit 2015 (April 29), Tyco sends Mr. Janisch results of
`“preliminary heat rise tests of Arctic Cat PDM, sealed unit, STL sample.”
`Mr. Janisch testifies that Exhibit 2015 shows that “Tyco had been diligently
`testing the PDM at my request, such as testing heat given off by the PDM.”
`Ex. 2002 ¶ 19. Other than the above, Mr. Janisch testifies generally that he
`“continued to work on developing the PDM both internally and with Tyco.”
`Id.; see Pet. Reply 6–7. Because Mr. Christianson’s and Mr. Kalsnes’
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`testimony is not specific as to facts and dates, neither provides additional
`details on any activities occurring at Arctic Cat or Tyco from April 1 to
`April 29, 2002. See Ex. 2003, 2034.
`As another example, Mr. Janisch includes rows in his table for August
`16, 2002 to October 18, 2002; October 18, 2002 to October 29, 2002; and
`October 29, 2002. Ex. 2002 ¶ 19. In these rows, Mr. Janisch cites
`communications dated August 16, October 18, and October 28. Id.2 In
`Exhibit 2021 (August 16), Mr. Janisch sends Tyco approval for product
`specifications and design objectives, and authorizes Tyco to proceed with
`testing. In Exhibit 2022 (October 18), Tyco provides Arctic Cat with a
`quotation for PDM bases and covers. In Exhibit 2023 (October 28), Tyco
`sends Mr. Janisch PDM drawing files. Constructive reduction to practice
`occurred on October 29, 2002, when the application leading to the ’188
`patent was filed. Ex. 1001, at [22]. Other than the facts in the three exhibits
`discussed above, Mr. Janisch testifies for this time period that “Tyco
`diligently performed testing on PDMs”; he “continued to integrate the PDM
`design into [Arctic Cat’s] vehicle harness designs . . . [which] included
`electrical wire routing to and from the PDM, and location and mounting of
`the PDM within various vehicle chassis”; and he “continued to test and
`develop the PDM.” Ex. 2002 ¶ 19; see Pet. Reply 10.
`We highlight these two exemplary time periods, not to scour the
`record for gaps in activity, but rather to highlight the character of Patent
`
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`2 Patent Owner also cites to Exhibit 2033 as evidence of diligence during
`this time period. PO Resp. 25–26. Exhibit 2033, however, is dated
`September 25, 2001 (not 2002). Mr. Janisch’s declaration includes the
`correct date for this exhibit and relies on that document as evidence of
`conception, not diligence. See Ex. 2002 ¶ 13.
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`Owner’s evidence. The critical period in this case spans 211 days (April 1,
`2002 to October 29, 2002), and the two exemplary time periods above
`account for 102 days of the critical period, or almost half. During these two
`time periods, Patent Owner presents evidence that Tyco was performing
`testing on the PDM, but the record contains little evidence of what that
`testing entailed and no evidence of the amount of time any testing was
`expected to take. For example, the record does not include the PDM
`specification and test proposal or the PDM development timeline referenced
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