Swearing Behind a Prior-Art Reference Requires "Reasonably Continuous Diligence," Not "Continuously Exercised Reasonable Diligence", PTAB Litigation Blog

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In a decision dated November 15, 2016, the Court of Appeals for the Federal Circuit vacated and remanded the PTAB’s decision in IPR2014-00233, in which the Board found (i) that Perfect Surgical Techniques, Inc. ("PST"), owner of U.S. Patent No. 6,030,384, had failed to antedate a prior art reference because PST had not proven that the inventor of the ‘384 patent was reasonably diligent in reducing the invention to practice, and (ii) that the reference as prior art rendered the claims at issue to be anticipated or obvious. See, Perfect Surgical Techniques, Inc. v. Olympus America, Inc., et al., No. 2015-2043 (Fed. Cir. Nov. 15, 2016). The Federal Circuit found that the Board had erroneously applied an improper, heightened standard for proving diligence by requiring PST to show that "the inventor continuously exercised reasonable diligence throughout the critical period," whereas the proper standard only requires the inventor to show that "there was reasonably continuous diligence throughout the critical period." Id., slip op. at 7 (emphasis original).

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