Deposition of Inventor Insufficient to Corroborate Inventor Testimony of Prior Conception

“[T]he inventor’s own testimony must be corroborated by some competent independent evidence or testimony… an inventor cannot corroborate their own testimony relating to prior conception.

The Federal Circuit recently affirmed the Patent Trial and Appeal Board (PTAB) finding that two design patents were unpatentable as obvious.  The Court found prior conception, diligence, and reduction to practice was not established by the uncorroborated inventor testimony.  See Kolcraft Enters. v. Graco Children’s Prods., Nos. 2018-1259, 2018-1260, 2019 U.S. App. LEXIS 19751 (Fed. Cir. July 2, 2019) (Before Moore, Reyna, and Chen, Circuit Judges) (Opinion for the Court, Reyna, Circuit Judge).

Kolcraft Enterprises, Inc. is the assignee of U.S. Design Patent Nos. D604,970 and D616,231, both of which are related to children’s play yards.  The patents described a play yard having four “exposed legs,” i.e., without fabric coverings.  The following FIGs. 1 and 2 of U.S. Design Patent No. D604,970 are representative of the design in both patents:

Deposition of Inventor Insufficient to Corroborate Inventor Testimony of Prior Conception

Graco Children’s Products, Inc. filed a petition for inter partes review (IPR) challenging the two design patents in March of 2016. The challenge asserted that both patents were obvious in light of U.S. Design Patent No. D494,393 assigned to Chen. The PTAB instituted trial on the patents based on the obviousness challenge.

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In its Patent Owner Response, Kolcraft provided an inventor declaration from inventors Troutman and Bretschger, and included Exhibits A–H with the declarations.  The Exhibits were photos and sketches of play yards “that Troutman and Bretschger claim to have invented.”  The declarations redacted all dates from when the exhibits were allegedly created.  Before Graco deposed the inventors, Kolcraft provided an unredacted version of the declarations, “where the blank spaces were replaced with alleged dates of conception and reduction to practice.”  During his deposition, Mr. Troutman alleged that the dates were provided from metadata associated with the images.  Kolcraft provided the Board the unredacted version of the declarations one day before oral hearing.  Neither the alleged metadata nor the computer files were provided.

The Board held that the evidence did not show conception, diligence, and reduction to practice prior to Chen’s filing.  Furthermore, the Board did not find the inventor’s declarations to be “corroborated by non-inventor testimony, documents, or other evidence.”

In order for the testimony of the inventor to be accepted by any court — not just the PTAB — the evidence must be corroborated by other evidence. If the inventor testimony is not corroborated it cannot be used by the decision maker when reaching a decision. It is deemed insufficient from an evidentiary standpoint regardless of what it says or suggests. Thus, the PTAB did not consider the deposition testimony for the dates of conception.  Accordingly, the PTAB found the design patents to be obvious in light of Chen, and Kolcraft appealed.

On appeal, the only issue considered by the Federal Circuit was whether the evidence was sufficient to support conception, diligence, and reduction to practice prior to Chen’s filing date.  “Inventor testimony of conception must be corroborated by other, independent information.” (citing Apator Miitors ApS v. Kamstrup A/S, 887 F.3d 1293, 1295 (Fed. Cir. 2018)).  The Judge Reyna explained that all evidence of prior conception originated from the inventors.  The original Exhibits A–H did not include dates, and the only evidence of dates was provided by the inventors’ deposition testimony. Kolcraft argued the Exhibits did not need corroborating evidence because they are “‘physical exhibits’ that are self-explanatory.”  (internal punctuation omitted).  Of course, this is an incorrect statement of law. Documents are out of court statements and must be introduced properly with foundation for the document laid, which in this case since it was an inventor affidavit would require corroboration.

The representative of the inventor attempted to point to metadata contained within the inventor’s affidavit as being corroborating evidence showing the critical dates. The problem with this evidence was never made a part of the record, and the only place it was mentioned was in the inventor’s deposition, and it was only mentioned by the inventor. Inventor testimony must be corroborated by some competent independent evidence or testimony. Indeed, an inventor cannot corroborate their own testimony relating to prior conception. Therefore, an inventor deposition is insufficient to corroborate an inventor affidavit relying on what the inventor said in the deposition.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Gene Quinn

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.

Gene Quinn

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 3 Comments comments. Join the discussion.

  1. Paul F. Morgan July 28, 2019 11:18 am

    Amazing how many times, for way more than a hundred years, this black letter law for trying to swear behind someone else’s earlier filing date has not been learned by so many patent attorneys.

  2. patent leather July 29, 2019 1:17 am

    I was never a big fan of “first to invent” and this is another example why. It was unusual when second to file would actually get rights to an invention. Yet the second to file could cause enormous aggravation to the first to file. I didn’t read this case but sounds like it just restates the old golden rule that the inventor’s conception must be corroborated by a non-inventor. Which is why some lab notebooks had pages for a witness signature.

  3. B July 29, 2019 10:30 am

    On one case, I literally had an examiner NOT perform a search in six years, but crappy examination is the rule in business methods. When the Examiner finally did perform a search, he produced a document that I attempted to swear behind, but literally more than 10 years since the date of reduction to practice had passed and most of the documentation was lost. Had he performed a search 2 years earlier, I’d have hundreds of thousand of lines of computer code available, which of course presents a different (but better) problem.

    Talk about prejudicing a client. I suspect that, given the bias of the PTAB and the total incompetence of far too many APJs, this will go to the CAFC. Given that most CAFC judges don’t understand basic statutory construction or even what that “shepardize” button means, I’m not optimistic.

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