NHK Seating of Am., Inc. v. Lear Corp., IPR2014-01200, Final Written Decision, Paper 29 (P.T.A.B. Feb. 2, 2016)
In IPR and CBM proceedings involving patents examined under pre-America Invents Act (AIA) rules, a patent owner may seek to disqualify a reference as prior art by demonstrating a date of invention prior to the publication date of the reference (or filing date, for a patent document). To “swear behind” a reference in this manner, the patent owner must prove (1) a conception and reduction to practice before the critical date of the reference, or (2) a conception before the critical date combined with diligence and reduction to practice after that date. See Taurus IP, LLC v. DaimlerChrysler Corp., 726 F.3d 1306, 1323 (Fed. Cir. 2013). The option to swear behind a reference is not available in Post Grant Review (PGR) proceedings, as these proceedings only involve patents examined under the first inventor to file provisions of the AIA.
In a Final Written Decision entered in NHK Seating of Am., Inc. v. Lear Corp., the Board addressed a patent owner’s swearing behind argument and provided guidelines on this practice. IPR2014-01200, Final Written Decision, Paper 29 (P.T.A.B. Feb. 2, 2016). In this case, the Board instituted review of claims of U.S. Patent No. 6,955,397 on the grounds that the claims were anticipated or obvious in light of various references. (Decision at 1-3.)
In its Patent Owner Response, Patent Owner Lear Corporation argued that one of the references—a German patent publication that was allegedly prior art under 35 U.S.C. § 102(a)—was not prior art to the challenged claims. (Id. at 10.) Specifically, Patent Owner argued that the inventor of the ’397 patent conceived the subject matter of the challenged claims before the effective date of the reference and diligently reduced the claimed subject matter to practice within the relevant time period. (Id.)
To support its arguments, Patent Owner filed an inventor declaration that included an invention disclosure record dated prior to the critical date of the reference. (Id. at 10-12.) The invention disclosure record included a figure that allegedly documented the inventor’s “earlier conception of the claimed invention” (id. at 11):
Click here to view image.
The Board disagreed, finding that the figure did not show conception of the claimed subject matter. (Decision at 12-13.) Specifically, the Board stated that the inventor declaration did not include any testimony correlating the components shown in the figure with elements of the challenged claims. (Id. at 13.) Lacking such testimony, the Board held that the inventor declaration and attached figure were insufficient to show conception of the claimed subject matter. (Id. at 12-13.)
In the Patent Owner Response, however, Patent Owner attempted to expressly correlate components shown in the inventor’s figure with elements of the challenged claims. (Id. at 13-14.) In particular, counsel for Patent Owner prepared an annotated version of the inventor’s figure, and the Patent Owner Response reproduced the claim language with embedded reference numerals used in the annotated figure. (Id.) The Board dismissed these portions of the Response as being mere “attorney argument unsupported by evidence” and indicated that the attorney argument should not be given weight in the conception analysis. (Id. at 15.)
The Board further stated that even if the attorney argument was treated as evidence, it would still fail to demonstrate the inventor’s conception before the critical date. (Id. at 15-16.) It is the Patent Owner’s burden to demonstrate the inventor’s possession of every feature recited in the challenged claims, the Board stated, and Patent Owner’s attorney argument failed to meet this requirement. (Id.) For example, the challenged claims required components to be connected at two different “coupling points,” and the Board found that Patent Owner’s annotated figure did not show such coupling points. (Id. at 16.) The Board thus concluded that Patent Owner had failed to establish conception prior to the critical date of the reference. (Id.)
The NHK Seating case provides a number of useful practice pointers on swearing behind:
- To swear behind a reference, it must be shown that the inventor possessed every feature of the claims prior to the critical date of the reference.
- If an inventor’s invention records are used to show prior invention, the inventor should provide testimony that expressly correlates each element of the claims with disclosure in the invention records.
- Attorney argument will be given little or no weight in the conception analysis.
Other Board decisions addressing swearing behind include the following:
CBS Interactive Inc. v. Helferich Patent Licensing, LLC, IPR2013-00033, Final Written Decision, Paper 122 (P.T.A.B. Mar. 3, 2014) – Conception must be proved by corroborating evidence; an inventor’s testimony, standing alone, is insufficient to prove conception. (Decision at 45-46.) In this case, Patent Owner filed an undated and unsigned handwritten specification, and the inventor testified that he prepared the handwritten specification prior to the critical date. (Id. at 46-47.) The Board stated that the inventor’s testimony was insufficient to corroborate the date of the handwritten specification and rejected Patent Owner’s swearing behind argument. (Id. at 47; see also Microsoft Corp. v. Surfcast Inc., IPR2013-00292, -00293, -00294, -00295, Final Written Decision, Paper 33 at 16-17 (P.T.A.B. Oct. 14, 2014) (dates of conception documents must be corroborated with non-inventor evidence).)
JDS Uniphase Corp. v. Fiber, LLC, IPR2013-000336, Final Written Decision, Paper 40 (P.T.A.B. Dec. 5, 2014) – Instead of relying on an inventor declaration to establish conception, Patent Owner attempted to rely on a declaration of a company executive who had “first-hand knowledge” of the company’s product development efforts. (Decision at 19.) The Board criticized the Patent Owner for asking the Board to consider what happened in the mind of the inventor, but without testimony from the inventor himself. (Id. at 20.) The Board rejected the Patent Owner’s swearing behind argument. (Id. at 24-25.)
Medtronic, Inc. v. Norred, IPR2014-00110, Final Written Decision, Paper 46 (P.T.A.B. Apr. 23, 2015) – To swear behind a reference, a patent owner must provide evidence with sufficient detail to establish possession of an embodiment of the invention having the particular limitations set forth in the claims. (Decision at 10.) In this case, the Board found that an inventor sketch lacked sufficient detail to describe each element of the claims and rejected the Patent Owner’s swearing behind argument. (Id. at 10-11.)
PTAB Decision: NHK Seating v Lear Corp – IPR2014-01200