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In its third PGR institution decision, the PTAB provided its first guidance regarding witness testimony to support a showing of prior public use or sale in PGRs.  The decision is a cautionary tale that the PTAB strongly prefers corroboration of witness testimony, much like the corroboration required during interference proceedings.  This is not a surprise, given that the PTAB and its predecessor also presided over interference proceedings.  Thus, uncorroborated witness testimony, alone, will not be sufficient to show prior public use or sale. Netsirv v. Boxbee, Case PGR2015-00009, Paper No. 10 (August 4, 2015).

The ’166 patent describes and claims a computerized method of coordinating a storage container system.  Claim 1 is a 13-step claim for a “method of stored item distribution to a user, the user associated with a user identifier, the method comprising” steps carried out by a computing system. The petitioner sought post-grant review of various claims of the ‘166 patent on the grounds of: lack of patent eligibility under 35 U.S.C. §101, anticipation under 35 U.S.C. §102 by prior public use of the method, and obviousness under 35 U.S.C. §103 in view of two patent references and the alleged prior public use.  The patent owner waived its preliminary response.

…uncorroborated witness testimony, alone, will not be sufficient to show prior public use or sale.

The PTAB analyzed the claims in view of the Supreme Court’s recent decision in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014).  It found that the challenged claims were directed to an abstract idea, that there were not meaningful limitations beyond the abstract idea, and that there was not an inventive concept sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the abstract idea.  The PTAB therefore granted the PGR with respect to the §101 issues.

To support anticipation in view of prior public use, the petitioner provided testimony of a Mr. Seeley to prove that the claimed method steps had been performed while operating his local storage business.  Mr. Seeley’s declaration provided a claim chart mapping the elements of each challenged claim to his testimony alleging prior use.

In deciding how to evaluate Mr. Seeley’s testimony, the PTAB noted that it was unaware of any binding precedent that requires that witness testimony showing unpatentability in PGRs must be corroborated.  Citing an 1892 Supreme Court case and subsequent Federal Circuit cases, the PTAB stated that it was “settled law” that testimony of witnesses alleging prior public use, or indeed any other theory of invalidity under 35 U.S.C. §102, “must be corroborated to prove credibility of the testimony by clear and convincing evidence.” However, this case law applies to proving invalidity in court by clear and convincing evidence, not necessarily to a showing of unpatentability before the PTAB by a preponderance of evidence.

The PTAB pointed out that, in the Patent Office, testimony to antedate prior art under 37 C.F.R. §1.131 need not be corroborated, but testimony to prove prior invention in interference proceedings must be corroborated.   Here, the PTAB followed the ‘rule of reason’ analysis set out in In re Reuter, 670 F.2d 1015, 1021 (CCPA 1981), which considered the following factors: “(1) delay between event and trial, (2) interest of witness, (3) contradiction or impeachment, (4) corroboration, (5) witnesses’ familiarity with details of alleged prior structure, (6) improbability of prior use considering state of the art, (7) impact of the invention on the industry, and (8) relationship between witness and alleged prior user.”

In evaluating Mr. Seeley’s testimony, the Board noted that Mr. Seeley is an interested party because he is the President and CEO of one of the Petitioner entities.  Mr. Seeley’s declaration was very detailed in its description of how each of the claimed method’s steps were carried out. However, the Board complained that “Petitioner does not offer corroboration for his testimony, and no explanation was given for why corroborative evidence was not provided.” Therefore, the PTAB determined that “Mr. Seeley’s testimony alone is insufficient to establish prior public use, sale, or knowledge.”  Because the obviousness ground depended on Mr. Seeley’s testimony for two elements of the claims, the PTAB also declined to institute the obviousness ground.

Notably, even though Seeley’s own patent was of record, and might have supplied at least some corroboration, the PTAB declined to perform the petitioner’s obligations.  It stated that “Petitioner does not contend that Mr. Seeley’s patent corroborates his testimony, either in part or whole. It is Petitioner’s burden to establish that it is more likely than not that a claim is unpatentable.”

Petitioners should take heed.  The PTAB will not do your job for you, and will expect to see the type of corroborated testimony that you would present in court.