“Inurement,” \i-ˈnu̇r-mənt, -ˈnyu̇r\ noun :in patent law the concept that the action of another may inure to one’s benefit, esp. where the actions of another in reducing an invention to practice may be attributed to the named inventor for purposes of establishing priority of invention. The Federal Circuit recently had occasion to address this concept in the context of an inter partes review. In NFC Technology, LLC v. Matal, 871 F.3d 1367 (Fed. Cir. 2017) the Federal Circuit reversed the Board’s final written decision that certain claims of U.S. Patent No. 6,700,551 were unpatentable as obvious. The Board had determined that a prior art patent having an earlier priority date than the ’551 Patent rendered the challenged claims obvious. The Board had rejected the patent owner’s efforts to antedate that prior art patent with evidence that the inventor had earlier conceived and reduced his invention to practice.
In reaching its decision, the Board assumed a prototype earlier reduced to practice embodied the claimed invention. The Board nevertheless rejected patent owner’s efforts to claim that prototype as the inventor’s own, concluding that the evidence was insufficient to permit the patent owner to claim the benefit of the actions of a third-party fabricator who constructed the prototype.
Believing itself bound by earlier Federal Circuit precedents relating to patent interferences, such as Cooper v. Goldfarb, 240 F.3d 1378 (Fed. Cir. 2001), the Board had determined that the patent owner was required to establish the named inventor had both conceived the claimed invention, and communicated its subject matter to the third-party fabricator. The Board determined that the inventor’s testimony to this effect was not sufficiently corroborated. The Board found telling the lack of emails or other communications from the inventor to the third-party describing the subject matter of the claims.
The Federal Circuit reversed. The Federal Circuit observed that “corroboration of every factual issue contested by the parties is not a requirement of the law.” Id. at 1374. Here, the Federal Circuit first concluded that there was adequate evidence to corroborate the inventor’s testimony that he conceived of the invention earlier than the prior art reference. The Federal Circuit concluded that a data sheet evidencing that conception bearing the inventor’s initials sufficiently corroborated the inventor’s testimony on this point.
The Federal Circuit next found substantial evidence lacking for the Board’s conclusion that corroboration was absent for the inventor’s testimony that the prototype was fabricated pursuant to his instructions. The Federal Circuit noted that a schematic generated by the fabricator identified the patent owner as “client,” attributed the design to the patent owner by listed its name in a field labeled “concept,” and bore a date consistent with the inventor’s testimony concerning when he communicated his concept to the fabricator. A facsimile cover sheet returned by the inventor to the fabricator prior to fabrication of the prototype mentioned the same model number used on the data sheet, and bore the inventor’s handwritten notation “OK FAB.”
The Federal Circuit further noted that the inventor was the “only source identified by the evidence for the design of the prototype,” and that “there is no record evidence of any other [patent owner] employee communicating with [the third-party fabricator.]” The Federal Circuit also observed that there was “no evidence that the [fabricator] did anything other than fabricate the prototype,” and highlighted the challenger’s failure to allege “that the [fabricator] or another [of patent owner’s employees] made any inventive contribution to the design of the prototype.” Id. at 1374.
“Taken as a whole,” the Federal Circuit concluded, “under the rule of reason, the totality of the evidence establish[ed] the credibility of the [inventor’s] account.” According to the Federal Circuit, all that is necessary is that the “inventor’s story [be] credible.” Id. at 1372.
The Federal Circuit’s decision provides valuable guidance for patent owners seeking in inter partes review to antedate prior art references—particularly where the reduction to practice was carried out by a third-party.