By Bryan K. Wheelock, Principal
In Aptator Miitors APS v. Kamstrup, [2017-1681] (April 17, 2018) the Federal Circuit affirmed the Board’s determination that U.S. Patent No. 8,893,559 was anticipated by Nielsen, U.S. Patent App. Pub. No. 2012/0006127, finding substantial evidence supported the Board’s finding that Apator failed to sufficiently corroborate the inventor testimony of earlier conception.
An inventor can swear behind a reference by proving he conceived his invention before the effective filing date of the reference and was diligent in reducing his invention to practice after that date. However, when a party seeks to prove conception through an inventor’s testimony the party must proffer evidence corroborating the inventor’s testimony. The sufficiency of the proffered corroboration is determined by a “rule of reason” analysis in which all pertinent evidence is examined. Under the rule of reason analysis, though, the evidence of corroboration must not depend solely on the inventor himself.
The evidence of prior conception included emails sent by the inventor transmitting drawings and presentations, but the only identification of the attachments was by the inventor. The Federal Circuit noted the 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.
The Federal Circuit concluded that a reasonable mind could conclude that Apator failed to proffer evidence corroborating the inventor’s testimony regarding conception, and accordingly held that substantial evidence supports the Board’s finding that Apator has not established prior conception.