Unwitnessed E-mails and Drawings Cannot Corroborate Testimony of Conception

Federal CircuitApator 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.

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Joseph Robinson

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

Joseph Robinson

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

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There are currently 1 Comment comments.

  1. Paul Morgan May 2, 2018 10:13 am

    There have been at least 3-4 of these IPRs in which a party attempts to “swear behind” prior art fling dates. They demonstrate that too many patent attorneys who opposed elimination of “first to invent” for AIA patents, yet never had interference experience, do not fully appreciate what proofs are actually required for that by 102(g) and the case law. No doubt due to years of rarely challenged ex parte declarations submitted to application examiners rather than to APJs in contested cases.