Posts Tagged: "corroboration"

Deposition of Inventor Insufficient to Corroborate Inventor Testimony of Prior Conception

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.

Gene Quinn & Joseph Robinson & Robert Schaffer

July 27, 2019

Broad List of References by PTAB Not Adequate Notice of Specific Combinations of Prior Art

The Court warned that by holding that EmeraChem did not have adequate notice or opportunity to respond, it was not holding that the Board is constricted in its final written decision to citing only the portions of a reference cited in its Institution Decision. “[W]ord-for-word parity between the institution and final written decisions” is not required; the question is whether the Board provided adequate notice and opportunity to respond… The Board must give a patent owner sufficient notice and opportunity to respond to its reliance on a particular use of prior art against particular claims. A general statement that lists all challenged claims and all asserted prior art is not sufficient notice of any and all specific combinations thereof which may arise.

Joseph Robinson & Robert Schaffer

June 23, 2017