Docket No. 2016-1361 (IPR2014-00504)
DYK, PLAGER, REYNA
May 31, 2017
Brief Summary: Board’s decision of no prior conception vacated and remanded because it did not follow “[t]he rule of reason” which “require[s] consideration of all pertinent evidence” (e.g., “[d]ocuments created shorter after the critical date and even undated documents may be relevant to corroborate an inventor’s testimony”).
Summary: IV II appealed IPR final written decision that the challenged claims of US 7,382,771 (“MSH1”) “and reduced it to practice prior to the critical date of the allegedly anticipating prior art.” The FC panel concluded “the Board erred by requiring as part of the LAN limitation that IV corroborate conception of authentication and control features”, claim construction it had previously rejected (In re NTP, FC 2011 (“We agree it would be improper to apply one claim construction to evidence of date of invention and a different one in assessing the prior art references.”)) The FC panel also found “a credibility issue arose bearing on whether the Windows 98 version used by the inventors in fact had the capability to provide the LAN limitation”. This point was acknowledged not be “direct evidence corroborating the conception of the invention because Windows 98 was not part of the claimed invention” and only “played a minor role.” But the FC panel found “the Board was too dismissive and erred in refusing to consider this evidence.” It explained that “[a]lthough conception must include every feature or limitation of claimed invention” (REG Synthetic, FC 2016), it does not need to “constitute definitive proof of [the inventor’s] account or disclose each claim limitation as written” and “[t]he focus must be whether the totality of the evidence makes the inventor’s testimony credible” (Fleming, FC 2014; Lazare Kaplan, FC 2010 (“the court has not impose[d] an impossible standard of ‘independence’ on corroborative evidence by requiring that every point…be corroborated by evidence having a source totally independent of the [witness]”)). The FC panel found the Board erred in “refusing to consider” an exhibit because it “did not corroborate timely conception” as it was dated “one month after the critical date” and an inventor’s testimony. The opinion explained that “[d]ocuments created shorter after the critical date and even undated documents may be relevant to corroborate an inventor’s testimony” (Lazare, FC 2010; Ohio Willow, FC 2013) and “[c]orroboration does not require that every detail of the testimony be independently and conclusively supported by explicit disclosures in the pre-critical date documents or physical exhibits” (Ohio Willow; Linear Tech., FC 2004). And “[t]he rule of reason requires consideration of all pertinent evidence” (TransWeb, FC 2016). The Board’s decision was therefore vacated and remanded.