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ARTICLE · 09 DECEMBER 2014

High Evidentiary Threshold For Diligence In Reducing Invention To Practice

McDermott Will & Emery
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Patent owner Click-to-Call (CTC) owned a patent directed to establishing anonymous telephone communications.

United StatesIntellectual Property
Gregory Rabin
Gregory Rabin
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Oracle Corp. v. Click-to-Call Technologies LP

Addressing the evidentiary threshold to show diligence in constructive or actual reduction to practice between the date of a prior art reference and the date the invention was reduced to practice, the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB) rejected a patent owner's attempt to antedate prior art, finding that in order to show diligence the patent owner must explain in detail the activities that occurred during the critical period, and that even a short period of inactivity may be sufficient to defeat a claim of diligence.  Oracle Corp. v. Click-to-Call Technologies LP, Case No. IPR2013-00312 (PTAB, Oct. 28, 2014) (Zecher, APJ).

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