Microsoft Corp. v. SurfCast, Inc.
Addressing the requirements for antedating prior art, the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB) ruled all claims of a challenged patent unpatentable, finding that in order to prove prior conception, an inventor’s testimony must be independently corroborated. Microsoft Corp. v. SurfCast, Inc., Case Nos. IPR2013-00292; and -00295 (PTAB, Oct. 14, 2014) (Clements, APJ).
Microsoft filed four petitions requesting inter partes review of a single patent that had claims related to a graphical user interface that organizes content from a variety of information sources into a grid of tiles, each with an independent refresh rate. SurfCast sought to antedate a prior art reference, a patent that Microsoft relied on as a § 102(e) reference. As evidence of conception dates, each inventor submitted a declaration. To corroborate the inventors’ testimony, SurfCast submitted physical exhibits in the form of e-mails exchanged between the two inventors, entries from one inventor’s notebook, white papers, photographs of a flip chart and a letter from SurfCast’s lawyers. Along with its physical exhibits, SurfCast offered a summary of Federal Circuit law in support of the contention that corroboration is not required for physical exhibits submitted to prove conception. Microsoft challenged the authenticity of the proffered evidence.
The PTAB, noting that SurfCast had misapprehended Federal Circuit case law, found that the patent owner had not proven prior conception. Specifically, the PTAB reaffirmed that for physical evidence submitted to corroborate conception, the dates of the conception documents were required to be corroborated, not just the contents of the documents. Crucially, the corroboration had to be by someone other than the inventors. The PTAB noted that the purpose of corroboration is to prevent fraud by providing independent confirmation of inventor testimony. A document authenticated by only an inventor does not achieve that purpose because it is not sufficiently independent.
The PTAB then analyzed SurfCast’s offer on the issue of diligence and noted that it failed to adequately evidence the exercise of continuous activity. For its analysis, the PTAB explained that a party alleging diligence must provide corroboration with evidence that is specific as to both facts and dates. For corroboration, SurfCast submitted invoices from its law firm, time entries and a declaration of an expert, as well as a declaration of a SurfCast co-founder. The PTAB noted that all of this evidence was uncorroborated by other independent evidence. The PTAB further observed that a declarant, Dr. Bones, had a financial interest in the outcome of the co-pending district court case and as a result had a financial interest in the IPR proceedings.
