Apator Miitors ApS v. Kamstrup A/S, No. 2017-1681, 2018 U.S. App. LEXIS 9674 (Fed. Cir. Apr. 17, 2018) (Before Moore, Linn, and Chen, J.) (Opinion for the court, Moore, J.).
Appellee Kamstrup A/S (“Kamstrup”) filed an IPR, and the Board instituted review of the challenged patent. Apator attempted to swear behind a cited prior art reference and submitted an inventor declaration and three emails with attachments to support the earlier conception date. The Board noted that there were no indicia in the body or header of the emails indicating what files were attached or what the attachments disclosed. The Board also noted that the only evidence that a file was attached to these emails was the inventor declaration. Accordingly, the Board rejected Apator’s attempt to swear behind the reference.
On appeal, the Federal Circuit considered whether there was substantial evidence to support the Board’s finding that Apator failed to sufficiently corroborate the inventor’s testimony of conception prior to the effective filing date of the prior art reference.
The Court noted that the evidence was stuck in a “catch-22 of corroboration.”
“Apator attempts to corroborate [the inventor]’s testimony with the emails and the drawings, but the emails and drawings can only provide that corroboration with help from [the inventor]’s testimony.”
Nonetheless, under the rule of reason analysis, the inventor’s emails and drawings were entitled to some corroborative value, similar to that of an unwitnessed laboratory notebook. The Court has permitted such unwitnessed writings to aid in corroborating witness testimony alongside other, more persuasive evidence. See e.g. Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1378 (Fed. Cir. 1986); Mikus v. Wachtel, 542 F.2d 1157, 1161 (CCPA 1976).
However, an unwitnessed laboratory notebook, alone, and without other persuasive evidence, cannot corroborate an inventor’s testimony of conception. Brown v. Barbacid, 276 F.3d 1327, 1335 (Fed. Cir. 2002). Likewise, the inventor’s unwitnessed emails and drawings, alone, cannot corroborate the inventor’s testimony of conception.
Unwitnessed emails and drawings, alone, cannot corroborate an inventor’s testimony of conception.