K-40 Electronics, LLC v. Escort, Inc.
Addressing the sufficiency of corroborating evidence to prove earlier reduction to practice, the Patent Trial and Appeal Board (PTAB) found that an inventor’s testimony regarding practicing features of an earlier invention was insufficient to establish reduction to practice in the absence of corroborating evidence. Accordingly, in finding the challenged claims to have been proven invalid, the PTAB considered prior art references post-dating the uncorroborated reduction to practice. K-40 Electronics, LLC v. Escort, Inc., Case Nos. IPR2013-00203, 2014 WL 4273883 (PTAB, Aug. 27, 2014) (Ward, APJ).
The patent in issue related to radar detectors that alert users if they detect law enforcement radar signals. Specifically, the patent claimed a police activity warning device with a “position determining circuit” used to “lockout” known radar sources that may trigger false alerts.
The PTAB instituted inter partes review (IPR) with the petitioner, contending that certain claims were unpatentable as anticipated and/or obvious based on various patent references. The patent owner argued that the references were not prior art because they were antedated by reductions to practice in the form of prototypes developed in 1992 and 1996.
Addressing the 1992 prototype, the PTAB found that the prototype was not a reduction to practice as it failed to meet all claim limitations. With respect to the 1996 prototype, the primary question was whether the prototype used, as required by the claims, a “positioning determining circuit” to alert and/or not provide an alert if the location signal correlated to a location of a rejectable signal. The inventor testified that the prototype contained the recited functionality and he presented written code to demonstrate this “lockout” feature. However, the lines of code providing position determining circuit functionality were missing from the software on record for the 1996 prototype. The only software containing such code was for later versions post-dating the alleged prior art patents. Analogizing the circumstances to the 2011 Federal Circuit decision in In re NTP (IP Update, Vol. 14, No. 8), the PTAB found that the inventor’s uncorroborated testimony that the 1996 prototype contained the claimed position determining circuit functionality was insufficient to prove by a preponderance of the evidence that the claims were reduced to practice prior to the date of the alleged prior art.
Accordingly, the PTAB considered the references cited by the petitioner and found the challenged patent claims invalid.