CAFC Affirms PTAB Finding of Insufficient Corroboration

Last week, the United States Court of Appeals for the Federal Circuit issued an opinion in Kolcraft Enterprises, Inc. v. Graco Children's Products, Inc., 2018-1259 (July 2, 2019). Graco filed petitions for inter partes review challenging two of Kolcraft’s design patents directed to aspects of a play yard design. The Patent Trial and Appeal Board (PTAB) instituted review of the patents based on arguments related to obviousness in view of U.S. Design Patent No. D494,393 to Chen, which has an effective filling date of January 7, 2004. In response, Kolcraft filed an inventor declaration, attaching paper exhibits illustrating features of Kolcraft’s patented play yard designs. The declaration averred that the inventions covered by Kolcraft’s patents were conceived of and reduced to practice on “a date prior to January 7, 2004.” When deposed later in the proceedings, one of the inventors asserted the conception and reduction to practice dates set forth in the declaration were supported by metadata from the computer files associated with the paper exhibits. Kolcraft did not, however, make the computer files of record. In its final written decision, the PTAB found that Chen constitutes prior art to the challenged Kolcraft patents because Kolcraft failed to show that conception, diligence, or reduction to practice occurred before January 7, 2004. Regarding Kolcraft’s inventor declaration, the PTAB concluded it lacked sufficient corroboration to support the inventors’ assertions about the dates of conception and reduction to practice. Kolcraft appealed.

The Federal Circuit affirmed. Regarding the inventors’ declaration, the Court explained “inventor testimony alone cannot prove conception;” such testimony must be corroborated by other, independent information. The Court noted that in assessing the sufficiency of purported corroboration the “rule of reason” is to be applied. Applying that rule, the Court held substantial evidence supported the PTAB’s finding that the inventors’ testimony lacked adequate corroboration to support a conception date “prior to January 7, 2004.” The Court emphasized that all of the alleged corroborating evidence originated with the inventors, and the metadata on which Kolcraft purported to rely for independent corroboration was not of record. As such, the inventors’ testimony about what the metadata showed suffered from the same problem as the inventors’ testimony about the conception date—no independent corroboration. Because Kolcraft’s appeal challenged only the finding that Chen is prior art, the Court affirmed the PTAB’s finding of unpatentability.

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