Docket No. 2017-1681 (IPR2015-01403)
MOORE, LINN, CHEN
April 17, 2018
Brief summary: PTAB IPR final written decision (FWD) finding anticipation and obviousness, and rejected Apator’s proffered evidence of prior conception since it was based only on the inventor’s own statements and not corroborated, affirmed.
Summary: Apator appealed PTAB IPR final written decision (FWD) finding claim 2 of pre-AIA US 8,893,559 anticipated by a US patent publication (“Nielsen”) and claim 10 obvious in light of Nielsen and a European patent application (“Korner”). The FC panel explained that “[t]he primary issue on appeal is whether Apator can swear behind Nielsen by showing conception and reduction to practice prior to Nielsen’s effective filing date” following the PTAB’s determination that had not properly done so (Perfect Surgical, FC 2016; § 102(g)). The FC panel explained “that when a party seeks to prove conception through an inventor’s testimony the party must proffer evidence, ‘in addition to [the inventor’s] own statements and documents,’ corroborating the inventor’s testimony…to prevent an inventor from ‘describ[ing] his actions in an unjustifiably self-serving manner’” (Mahurkar, FC 1996; Hahn, FC 1989; Chen, FC 2003; Medichem, FC 2006; Cooper, FC 1998). And “[t]he sufficiency of the proffered corroboration”, it explained, “is determined by a ‘rule of reason’ analysis in which all pertinent evidence is examined” (In re NTP, FC 2011). The PTAB’s factual findings, of which sufficiency of corroboration is one, are reviewed for substantial evidence (that which “a reasonable mind migh accept as adequate to support a conclusion” (Consol. Ed., US 1938), and “the possibility of drawing two inconsistent conclusions from the evidence’ will not render the [PTAB’s] findings unsupported by substantial evidence” (Consolo, US 1966). The FC panel agreed with the PTAB that “Apator…failed to proffer any evidence of” the inventor’s “conception that is not supported solely by” the inventor himself (e.g., one of the inventor’s emails failed to include any indicia that a file describing the invention was attached thereto and inventor’s drawings were not shown to antedate Nielsen’s effective filing date). The FC panel explained that “[t]he evidence proffered by” the inventor “is stuck in a catch-22 of corroboration: Apator attempts to corroborate [the inventor’s] testimony with the emails and the drawings, but the emails and drawings can only provide that corroboration with help from [the inventor’s] testimony.” Apator argued the the emails and drawings “like unwitnessed laboratory notebooks, have some corroborative value, citing Singh” (FC 2000). The FC panel agreed with Apator “that, [u]nder a ‘rule of reason’ analysis, the fact that a notebook entry’ or other writing ‘has not been promptly witnessed does not necessarily disqualify it” (Hybritech, FC 1986; Mikus, CCPA 1976), that “alone, cannot corroborate an inventor’s testimony of conception” (Brown, FC 2002; Procter, FC 2009). And the FC panel explained that “[i]t is no answer that Apator’s evidence is ‘unrebutted,’” which “misunderstands [the] burden of proof under § 102(g), which requires that Apator prove” the inventor conceived of the invention before the prior art’s “effective filing date, not that Kamstrup prove [he] did not” (In re Magnum, FC 2016). Thus, the FC panel agreed with the PTAB that conception had not been established and therefore did not reach the issue of diligence in reducing the invention to practice.