By Matthew L. Cutler, Principal
The fact-based nature of conception/reduction to practice issues makes it worthwhile to consider a number of these types of cases as they arise. Here, we discuss such issues from two Board decisions, K-40 Electronics, LLC v. Escort, Inc., IPR2013-00240 and Handi Quilter, Inc. and Tacony Corporation v. Bernina International AG, IPR2013-00364. In both cases, the Board rejected Patent Owner’s attempt to antedate the prior art-at-issue.
The K-40 Electronics case involves US Pat. No. 6,670,905, relating to a radar detector and a location positioning device. Decision at 3. Patent Owner relied upon declaration testimony from the inventor of the ‘905 patent, which stated that the claims at issue were conceived and reduced to practice prior to the effective art dates of two references relied upon by Petitioner. Of course, to establish reduction to practice, a party must show: (1) construction of an embodiment that meets all claim limitations; (2) determine that the invention would work for the intended purpose; and (3) sufficient evidence to corroborate inventor testimony as to the events. ‘240 Decision at 11.
The inventor testimony stated that a 1992 prototype of the ‘905 invention was constructed prior to the priority date of the references-at-issue. and used a tape recorder to record geographical location of a radar signal. The inventor alleged that this feature met the claimed limitation of a “position determining circuit.” The Board rejected this contention, citing back to its claim construction determination, finding that a tape recorder did not determine geographic position; rather, a tape recorder was only an electronic notepad to record observations of the invention. Id. at 12-13. Accordingly, the prototype did not reduce all claim limitations to practice.
Inventor also testified that a different 1996 prototype also had a “position determining circuit” in which software code was drafted to demonstrate global positioning capability. The inventor was forced to concede, however, that the software did not disclose a position determining circuit. The inventor testified that some of the lines of software were missing and Patent Owner could not find any version of the software that contained the missing code.
This hole in the evidence presented by Patent Owner exposed a critical flaw in its objective evidence corroborating reduction to practice; namely, Patent Owner was using the software to corroborate expert testimony, but simultaneously had to use expert testimony to corroborate missing features of the software. Id. at 14-15. The Board also found several statements by the Inventor regarding claimed features of the invention allegedly being reduced to practice to generally lack adequate evidentiary corroboration. Id. at 15. Accordingly, with a general lack of evidence, Patent Owner in IPR2013-00240 failed to prove conception and reduction to practice prior to the art date of two references relied upon by Petitioner. Id. at 17.
The Handi-Quilter case involves US Pat. No. 6,883,446, which relates to a method and apparatus for stitching together fabric layers. ‘364 Decision at 12. Patent Owner generally failed to prove conception of several features of the ‘446 invention. Specifically, Patent Owner did not provide evidence that the inventor had conceived of the limitation, that required controlling the stitch head or needle arm so that it actuates in response to detected movement, prior to the priority date of the art at issue. Id. at 12. In fact, the inventor admitted on the record that he had not decided on a control circuit for the prototype until after the art date of the reference at issue.
Further, the Board questioned the reliability of the evidence presented to establish conception and reduction to practice. The evidence presented was a hand-written sketch of the invention with a date well before that of the reference at issue. Though the hand-written document had a date printed on it, the record showed no corroboration beyond the inventor’s sworn statement that this date was in fact the date the document was created or last-modified. Id. at 13. In fact, the document was not seen by anyone besides the inventor until seven years after the date written on the paper. Further, other testimony attempting to corroborate the inventor’s sworn statement of conception was found to be either unreliable or consisting of bare legal conclusions, not underlying facts. Id. at 14-15. Lastly, demonstrations of the invention by the inventor as detailed by the inventor’s wife weren’t persuasive because the inventor’s wife either did not actually witness the demonstration or the demonstration was only of part of the invention, not all claimed features. Unsworn statements by the inventor’s sons also weren’t given weight because they weren’t sufficiently independent from the inventor. Id. at 16. Accordingly, the Board found that Patent Owner had failed to prove conception and reduction to practice in attempting to antedate a prior art reference.