Docket No. 2016-1808 (IPR2014-01198)
LOURIE, REYNA, STOLL
September 20, 2017
Brief summary: PTAB IPR FWD of invalidity for obviousness reversed and remanded as sufficient evidence corroborated inventor’s testimony regarding conception, and it must decide whether a prototype embodied the claimed invention.
Summary: NFC appealed PTAB decision after IPR (brought by HTC) that claims 1-3 and 5 of US 6,700,551 relating to a “near-field communication device” capable of using the two existing near-field communications standards are unpatentable as obvious “Sears”. “[T]he PTAB rejected NFC’s argument that it had created a prototype embodying the claimed invention before the priority date of a cited reference, on the basis that NFC had not adequately proven that certain third-party activity inured to NFC’s benefit.” NFC bore the burden to antedate Sears and argued that the ‘551 inventor (“Charrat”) “had reduced the invention to practice” as the “M210H device” “before Sears’s priority date” at INSIDE Technologies and “presented evidence to support its contention” (Charrat’s testimony and corroborating “initial data sheet”, “excerpts from lab notebooks”, “diagrams”, details of tests conducted, and “wiring diagram”). By June 1998, NFC argued, Charrat and his team had sufficiently developed the device that they commissioned Concept Electronique (‘CE’), a chip fabrication device, to generate printed circuit board (‘PCB’) layouts for the M210H device.” The PTAB “concluded that none of the provided documents established ‘directly who conceived of the subject matter…and when that person…did so” (Cooper II, FC 2001; Genentech, FC 2000; Cooper I (FC 1998)). And it “did not decide whether INSIDE’s prototype embodied the claimed invention” and “instead, concluded that, even assuming” it did, NFC did not establish that “CE’s fabrication…inured to Charrat’s benefit.” NFC’s appeal focused on the inurement analysis, arguing that it “should not have been addressed…at all because it was not raised by the parties” and the PTAB “erred by evaluating the evidence using interference standards for determining priority of invention, rather than the 37 C.F.R. § 1.131 standard for antedating a reference”, and that it had provided sufficient corroborating evidence. The FC panel limited its analysis to the conception issue and whether Charrat’s testimony was properly corroborated (“no particular formula”, “an evaluation of all pertinent evidence must be made so that a sound determination of the credibility of the inventor’s story may be reached” (Singh, FC 2003)). And it concluded “that Charrat’s testimony relating to conception was adequately corroborated”, the PTAB’s findings being “either inconsistent with the documents themselves” or that it did “not adequately consider the portions of the documents that support corroboration” (e.g. “The Board’s discounting of the facsimile cover sheet…did not adequately consider its corroborative effect.”) The FC panel explained that, as in Loral Fairchild (FC 2001, forgiving the inventor’s inability ‘to submit documents showing production test results” from “almost 30 years ago”), “Charrat’s account is corroborated” (In re Jolley, FC 2002). It also determined that the PTAB, on remand, must determine whether “the prototype embodied the claimed invention” before reaching the inurement issue.