Ante dating prior art
the Board rejected Patent Owner’s attempt to antedate 102(a) prior art under the Doctrine of Inurement, finding that insufficient evidence supported a finding that the work of a third party inured to the benefit of Patent Owner.More specifically, Patent Owner argued that it had communicated the design of the subject matter later claimed in the subject patent (design for a multiple-crock buffet server) to a third party for manufacture of a prototype.Accordingly, the court vacated the PTAB’s finding that Perfect Surgical failed to antedate the prior art reference and remanded the case for consideration of whether, under a rule of reason analysis, the evidence shows that the inventor and his patent attorney worked reasonably diligently to reduce the invention to practice during the critical period.Judge Schall dissented from this portion of the opinion because he concludes that the dates of inactivity during the critical period were sufficient to support a finding that the inventor was not diligent.
Petitioner argued: (1) because a third party (rather than the inventors) built the prototypes, there was no reduction to practice; (2) Patent Owner did not show that the third party building the prototypes inures to Patent Owner’s benefit; and (3) the photographs of the prototype produced by the third party were insufficiently clear to establish conception of the design by the inventors prior to involvement of the third party. After rejecting Patent Owner’s argument that the foundational case law of the doctrine of inurement does not apply to design patents (only to utility patents), the Board narrowed the key issue to whether the third-party-built prototypes inure to Patent Owner’s benefit. The Board began by rejecting Patent Owner’s assumption that conception had taken place, and stated that Patent Owner had not, in fact, shown that conception of the claim design happened before the prior art date.., IPR2013-00131, where the Board found that Patent Owner antedated a key prior art reference…despite the fact that the inventor testified on behalf of Petitioner. The inventor further testified his notebook entry “confirms that we still had a long way to go [for commercialization].” The Board sided with Patent Owner, finding that “[t]here is no requirement that the invention, when tested, be in a commercially satisfactory stage of development.” 325 F.2d 328, 333 (2d Cir.1963). Thus, the testimony from the inventor himself did not persuade the Board that the invention was not reduced to practice prior to the critical date of a key prior art reference.To uphold its burden of proving an earlier invention, Patent Owner relied on testimony from two fact witnesses who explained the steps undertaken by Patent Owner in conceiving and reducing to practice the claimed invention. In rebuttal, Petitioner relied on testimony from the inventor himself. He relied upon his own activities and those of his patent attorney to prove diligence.Under pre-AIA 102(g), an inventor may antedate a reference by proving, with corroborated evidence, an earlier conception and reasonable diligence in reducing the invention to practice. In this case, the inventor relied on his filed patent application as a constructive reduction to practice, so he was required to show diligence from just prior to February 10 to May 1, 1998 (the critical period). Nezhat had not provided sufficient evidence to demonstrate that he had continuously exercised reasonable diligence throughout the entire critical period.