The Federal Circuit reversed, in part, a PTAB final written decision after determining that several emails, wrongly excluded as hearsay, showed the inventor’s conception prior to allegedly anticipating art. In REG Synthetic Fuels, LLC v. Neste Oil Oyj, No. 2015-1773 (Fed. Cir. Nov. 18, 2016), the Federal Circuit reversed the PTAB’s finding that a prior art reference anticipated the challenged claims directed to a certain paraffin composition. The Federal Circuit determined that emails the PTAB wrongly excluded from evidence sufficiently established that the Patent Owner conceived the invention before the filing date of the prior art reference.
The Federal Circuit first observed that “[p]riority of invention and its constituent issues of conception and reduction to practice are questions of law predicated on subsidiary factual findings.” “Conception,” according to the Federal Circuit, “is the formation, in the mind of the inventor of a definite and permanent idea of the complete and operative invention, as it is thereafter to be applied in practice.” Conception must be proved “by corroborating evidence which shows that the inventor disclosed to others his completed thought expressed in such clear terms as to enable those skilled in the art to make the invention.” The evidence of conception “must include every feature or limitation of the claimed invention.”
In finding that the Patent Owner had adequately established prior conception, the Federal Circuit pointed to three emails that the inventor had exchanged with third parties. The first of these emails detailed the process a third party was to follow in producing the compound. The second was an email from that third party reporting on the analysis of the resulting compound produced pursuant to the process. The Federal Circuit concluded that these emails sufficiently evidenced that the inventor had conceived of a definite process which he disclosed to a third party, that the described process was sufficient to enable that third party to produce the inventive compound, and that the reported analysis of that compound showed that it met the claim’s requirement that a compound have 80% of more by weight of “even-numbered-carbon paraffins.” The Board had admitted these emails into evidence.
The remaining email evidenced the inventor’s appreciation that the compound had the required weight of “even-numbered-carbon paraffins.” The Board had excluded this inventor email on the grounds that it was inadmissible hearsay. The Federal Circuit disagreed.
In the email, the inventor advised yet another third party that he had achieved the required 80% limitations recited in the challenged claims. Specifically, the inventor wrote that he “had more difficulty than [he] expected trying to recover a 90+% purity nC18 product using [his] lab distillation glassware (80% purity C18 is the best [they] got).” The Federal Circuit determined that the email was not offered as evidence of the truth of the matter asserted and, therefore, it did not constitute inadmissible hearsay. Instead, the Federal Circuit found that the evidence relevant to prior conception was the mere act of sending the email—an act which established that the inventor had previously communicated to a third party the important weight threshold for his particular paraffins.
The act of writing and sending the email is, by itself, probative evidence on whether [inventor] recognized—at the time that he had written the email—that the sum of the weight percentages of even-carbon-number paraffins in his compositions was at least 80 wt% and communicated this to a third party.
Due to the absence of any factual findings regarding reduction to practice, the Federal Circuit remanded the action to the PTAB for a determination as to whether the inventor diligently reduced his conception to practice in a manner sufficient to antedate the prior art reference.
The Federal Circuit’s decision appears to be the first in which the Court has reversed the PTAB on the basis of such an evidentiary ruling.