Federal Circuit affirms Board IPR decision invalidating design patents for obviousness

Kolcraft Enterprises, Inc. v. Graco Children’s Products, Inc.

Docket No. 2018-1259-60 (IPR2016-00816, -00826)
July 2, 2019

Brief summary:  Board IPR decision of invalidity of Kolcraft’s design patents affirmed as evidence regarding inventor’s date of conception was uncorroborated.

Summary:  Kolcraft appealed PTAB (“Board”) IPR decision finding Kolcraft’s design patents D604,970 and D616,231, each entitled “Exposed Legs for a Play Yard” (e.g., playpens), unpatentable as obvious.  Graco successfully argued for unpatentability in view of D494,393 (“Chen”).  In this appeal, Kolcraft did not contest that, if “Chen ‘393 is prior art, then the ‘970 and ‘231 patents are obvious.”  Kolcraft argued that the Board erred in finding that its inventors (Troutman and Bretschger) “did not conceive of the inventions of the ‘970 and ‘231 patents before the filing of Chen ‘393 and that they did not exercise reasonable diligence or reduce to practice the patented inventions before January 7, 2004” (Chen’s ‘393 effective filing date).  The FC panel explained that “[c]onception is ‘the formation, in the mind of the inventor of a definite and permanent idea of the complete and operative invention”, and that corroboration is an underlying finding of fact on which that question depends (Apator, FC 2018 (“Inventor testimony of conception must be corroborated by other, independent information.”); REG, FC 1985; Hoop, FC 2002; In re VerHof, FC 2018).  Kolcor relied on inventor deposition testimony, an Inventor Declaration, and exhibits that “[a]ll…originated with the inventors” to argue for earlier conception and reduction to practice, but the Board found the evidence to be “conclusory and uncorroborated”.  The FC panel concluded that substantial evidence supported the Board’s finding (e.g., evidence “supported solely by the inventors themselves”, “the metadata is not part of the record”, “unwitnessed emails from the inventor to third parties…no indication from the email headers that a file was attached”) (Chen, FC 2003 (“Evidence of the inventive facts must not rest alone on the testimony of the inventor himself.”); NFC Tech., FC 2017 (“Inventor testimony alone cannot prove conception.”))  Thus, the Board decision of invalidity was affirmed.

This entry was posted in Conception and Reduction to Practice, Design Patents, Inter Parties Review (IPR), IPR, Obviousness, Uncategorized. Bookmark the permalink.

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