In Apator Miitors ApS v. Kamstrup A/S, No. 2017-1681 (Fed. Cir. Apr. 17, 2018), the Federal Circuit affirmed the PTAB’s conclusion that Apator failed to swear behind a prior art reference, because Apator did not sufficiently corroborate the inventor’s testimony of conception prior to the reference’s filing date.

In IPR, Kamstrup asserted that claims of Apator’s U.S. Patent No. 8,893,559 were anticipated by the Nielsen reference and rendered obvious by Nielson and a European patent. To antedate the Nielsen reference, Apator proffered declaration testimony from the inventor, emails sent by the inventor prior to Nielsen’s filing date, and several drawings to show prior conception. The emails referenced certain attachments, but did not identify the name of the attachments. The declaration, however, identified the attachments as the proffered drawings. Apator relied on this evidence to show conception prior to Nielsen’s filing date and argued that the emails and drawings sufficiently corroborated the inventor’s testimony of prior conception.

On appeal, the Federal Circuit determined that the inventor’s conception testimony was not sufficiently corroborated because the “evidence of corroboration must not depend solely on the inventor himself.” The court explained that Apator’s evidence was “stuck in a catch-22 of corroboration,” because Apator attempted to corroborate the inventor’s testimony with emails and drawings, but “the emails and drawings [could] only provide that corroboration with help from [the inventor’s] testimony.” Based on this evidence, the court held that Apator failed to show prior conception because the proffered evidence was not independent of the inventor’s testimony.