The US Court of Appeals for the Federal Circuit affirmed a Patent Trial and Appeal Board (PTAB) determination that the patent owner could not establish an earlier date of invention based on evidence originating from the inventors that was not independently corroborated, and thus affirmed that the patents-in-suit were unpatentable as obvious over the prior art. Kolcraft Enterprises, Inc. v. Graco Children’s Products, Inc., Case Nos. 18-1259, -1260 (Fed. Cir. July 2, 2019) (Prost, CJ).
Graco Children’s Products filed a petition for inter partes review challenging two Kolcraft design patents related to playpens as—among other things—unpatentable over a particular prior art reference. In its patent owner response, Kolcraft sought to antedate the prior art based on a redacted inventors’ declaration with attached exhibits (Inventor Declaration) and on the inventors’ deposition testimony. Notably, the redactions included the alleged dates of conception and reduction to practice. During deposition, one of the inventors testified that the redacted dates “were based on metadata associated with the computer files containing the exhibits.” One day before the oral hearing, Kolcraft filed an unredacted version of the Inventor Declaration. During the hearing, Kolcraft admitted that the unredacted Inventor Declaration was not part of the evidentiary record.
The PTAB found that Kolcraft had failed to demonstrate that it was entitled to an earlier conception date. The PTAB explained that the redacted Inventor Declaration and accompanying exhibits were “undated and find identification, if at all, only via the conclusory and uncorroborated testimony of the inventors.” Further, the PTAB determined that Kolcraft had waived its reliance on the inventors’ deposition testimony regarding prior conception because it raised that issue for the first time during the hearing. Having determined that Kolcraft could not establish prior conception, the PTAB determined that the patents-in-suit were obvious over the prior art reference. Kolcraft appealed.
Noting that the case “turns on the corroboration of inventor testimony,” the Federal Circuit reiterated its holding in Apator Miitors v. Kamstrup (Fed. Cir. 1996) that “[i]nventor testimony of conception must be corroborated by other, independent information.” Turning to the Inventor Declaration and the inventors’ deposition testimony, the Court explained that both “originated with the inventors of the [patents-in-suit]” themselves.” The Court also determined that the PTAB’s refusal to consider the unredacted Inventor Declaration and inventor deposition testimony was “immaterial” because both pieces of evidence “are supported solely by the inventors themselves.” Similarly, the Court explained that the alleged dates of the exhibits accompanying the Inventor Declaration were supported only by the inventors’ testimony. Thus, the Court concluded that “[t]here is no evidence in the record independently corroborating the inventors’ alleged conception prior to [the prior art].”
The Federal Circuit also rejected Kolcraft’s argument that the metadata associated with the exhibits established an earlier conception date. The Court noted that the metadata was not part of the record, and that the only other evidence addressing the metadata was the inventors’ deposition testimony, “which [wa]s insufficient to corroborate inventor testimony of prior conception.”
Thus, the Federal Circuit found that substantial evidence supported the PTAB’s finding that Kolcraft had not established a conception date prior to the asserted prior art.
Practice Note: Documentary evidence authored by an inventor will not corroborate an inventor’s testimony regarding prior conception. When necessary, parties should affirmatively take necessary steps to make any metadata part of the record before relying on it.
