On November 25, 2014, The Patent Trial and Appeal Board (PTAB) entered its final written decision in Sequenom, Inc., v.  Board of Trustees of Leland Stanford Junior Univ. (IPR2013-00390, Paper No. 45. While Inter Partes Review was instituted on December 9, 2013, the PTAB ultimately decided that the Patent Owner established a prior reduction to practice of the invention as claimed in U.S. Patent No. 8,195,415 (the ’415 patent).  In its petition, Sequenom, Inc. relied on Lo et al., U.S. Patent App. Pub.  No. 2009/0029377 A1 (“Lo II”) in support of each instituted ground of unpatentability. However, Lo II was effectively antedated by evidence corroborating Patent Owner’s prior reduction to practice of the claimed invention. (Paper No. 45 at p. 5).  As evidenced by this Decision, when a Petitioner rebuts evidence of an actual reduction to practice, the Petitioner should provide clear evidence to challenge the Patent Owner’s evidence: mere allegations are not enough.

To argue reduction of practice, Patent Owner relies on a paper published in the Proceedings of the National Academy of Sciences (“the PNAS paper”), which is co-authored by the two inventors of the ’415 patent. Specifically, Patent Owner contends that two early drafts of the PNAS paper, an email correspondence associated with the drafts, and a testimony by one of the PNAS paper’s coauthors, Dr. Yair J. Blumenfeld, establish that the inventors reduced to practice the subject matter recited in the claims of the ’415 patent prior to Lo II’s filing date.  Patent Owner further provides a chart to support its assertion that all of the subject matter claimed in the ’415 patent is presented in the drafts. (Paper No. 45 at pp. 5-6).

In response, Petitioner argues that independent of inventor Dr. Fan’s testimony, Patent Owner merely supports an actual reduction to practice using “an unwitnessed and unsigned laboratory notebooks (Ex 2132), emails between the inventors and various and various parties  that fail to reference the specific steps of the ‘415 Patent claims, and testimony by third parties who lack specific knowledge of the inventors’ alleged activities during the relevant time period.” (Paper No. 45 at p. 6).  Petition asserts this fails to provide sufficient corroborating evidence to assert actual reduction to practice. The Board disagrees with the Patent Owner’s arguments and notes that corroborating evidence may include “testimony of a witness, other than an inventor, to the actual reduction to practice or it may consist of evidence of surrounding facts and circumstances independent of information received from the inventor.” (Paper No. 45 at p. 8 citing Hahn v. Wong, 892 F.2d 1028, 103-33 (Fed. Cir. 1989)).

In determining whether Patent Owner has advanced evidence sufficient to corroborate an actual reduction to practice, the Board looks to the testimony of Dr. Blumenfeld.  In his testimony, Dr. Blumenfeld states Dr. Fan sent him a “rough draft of the non-invasive study,” on June 19, 2008 and cites to the exhibits of the PNAS paper provided to the Board.  Furthermore, Dr. Blumenfeld testified that he provided revisions of the document Dr. Fan sent him on July 7, 2008.  The Board concludes that “Dr. Blumenfeld’s testimony, considered in conjunction with the exhibits he cites, persuades us that Patent Owner has advanced sufficient evidence, independent of the inventors’ testimony, to corroborate reduction to practice of the subject matter of claims 1-17 of the ‘415 patent as of June 19, 2008.” (Paper No. 45 at p. 10).

The Board further disagrees with Petitioner’s argument that Patent Owner proffers no testimony to verify that the documents in the Exhibits are a copy of the actual document received by Dr. Blumenfeld on June 19, 2008.  The Board concludes that petitioner has not shown ambiguity in the asserted date of the draft, nor gives the Board a credible reason to doubt that the draft exhibits are copies of the actual document Dr. Blumenfeld received. (Paper No. 45 at p. 11).

While a Patent Owner may overcome an IPR petition by antedating the prior art by providing evidence sufficient to corroborate an actual reduction to practice, it is important to remember that establishing an actual reduction to practice requires that an inventor’s testimony be corroborated by independent evidence. (Paper No. 45 at p. 8 citing Cooper v. Goldfarb, 154 F.3d 1321, 1330 (Fed. Cir. 1998).  However, under the Board’s ‘rule of reason’ analysis, circumstantial evidence of an independent nature can be used to satisfy the requirement.

In this scenario, Dr. Blumenfeld provided emails explaining his revisions to prior drafts, which were weighed as evidence that he was aware of and capable of identifying the drafts.  Further, Petitioner failed to provide any evidence undercutting Dr. Blumenfeld’s testimony or any credible reason to doubt the drafts were actual copies.  Consequently, Petitioner’s contentions that Patent Owner provided no evidence to verify the drafts as actual copies of what were received by Dr. Blumenfeld were held unpersuasive.