As we have discussed (here and here), owners of pre-AIA patents may be able to “swear behind” alleged prior art references by providing evidence of an earlier invention date, but the inventors’ testimony concerning conception of the invention must be corroborated by independent evidence. In Kolcraft Enterprises, Inc. v. Graco Children’s Products, Inc., No. 2018-1259 (Fed. Cir. Jul. 2, 2019), the patent owner was unable to swear behind alleged prior art because it did not provide sufficient corroborating evidence.
The patent owner’s challenged design patents claim an ornamental design for a “play yard” product. In response to IPR petitions based on alleged 35 U.S.C. § 102(e) prior art (an earlier-filed design patent), the patent owner filed short (six-page) patent owner responses, with declaration testimony of two inventors asserting an earlier invention date. The Board determined that the patent owner failed to prove earlier conception, diligence, and reduction to practice, and that the inventor testimony was not corroborated by non-inventor testimony, documents, or other evidence.
In affirming the Board’s decisions, the Federal Circuit determined that there was no independent corroborating evidence, because the inventor declarations, inventor deposition testimony, and documentary exhibits (photographs and sketches) were all “supported solely by the inventors themselves.” Although physical exhibits may be relied on to corroborate inventor testimony, in this case the physical exhibits were “undated and lack any showing of authorship.” The patent owner sought to rely on metadata to establish the dates of photographic exhibits, but the patent owner failed to put the actual metadata in the record, relying on inventor deposition testimony concerning the metadata. For these reasons, the Board’s finding that the patent owner failed to corroborate inventor testimony of prior conception was supported by substantial evidence.
This case is another reminder that patent owners must be careful to satisfy all legal requirements for swearing behind prior art, including providing sufficient corroborating evidence. Physical evidence such as photographs may corroborate inventor testimony, but the patent owner cannot rely on inventor testimony alone to establish the dates of the photographs or other evidence.