One of the more fact-dependent inquiries in patent disputes is the issue of conception and reduction to practice. This issue was raised in an inter partes review setting in CBS Interactive Inc. v. Helferich Patent Licensing, LLC, IPR2013-00033, Paper 122 (Final Written Decision), wherein Patent Owner sought to swear behind cited prior art by filing a declaration from the inventor and a handwritten specification claimed to have been written before the critical date. Id. 44.
The art at issue was 35 U.S.C. § 102(e) art — filed “before the invention by the applicant for patent.” In the inventor’s declaration, he testified that he conceived the subject matter of each challenged claim prior to the filing date of the prior art. As corroborating proof of this earlier invention, the inventor cited to an undated, handwritten specification allegedly describing the claimed invention. The inventor testified that he completed the handwritten specification prior to the critical date. Id. at 45.
Of course, an inventor’s testimony, standing alone, is insufficient to prove conception — some form of corroboration is required. In re NTP, Inc. 654 F.3d 1279, 1291 (Fed. Cir. 2011). Id. at 45. The Board determined that the undated, handwritten specification did not qualify as corroborating evidence because it was undated and unsigned. The inventor’s testimony, that he prepared and completed the specification prior to the critical date, was deemed insufficient to corroborate the date of the specification. Further, an inventor’s own testimony is not “independent” corroboration of proof that comes from the inventor himself. Id. at 47. Failing to swear behind the critical prior art, the Board ultimately determined that all challenged claims were unpatentable.