Corroboration of reduction to practice must corroborate that invention worked for intended purpose

December 05, 2007
Post by Blog Staff

In a decision today, the Federal Circuit affirmed the BPAI's decision in an interference proceeding awarding priority to the senior party. The junior party attempted to show an actual reduction to practice before the senior party's priority date.

While the junior party offered evidence of an earlier actual reduction to practice, the corroborating evidence was insufficient. The corroborating witness just stated that he saw the device in question in the junior party's laboratory. There was no corroborating evidence that the device actually worked for its intended purpose, and so the corroboration was insufficient to establish an earlier reduction to practice. As a result, the court affirmed the decision to award priority to the senior party.

This case arose from an interference between a patent and a pending application relating to use of micromirrors to catalyze reactions. The inventors of the patent (Quate & Stern, referred to as "Quate") were the senior party, able to claim priority to a provisional application filed May 29, 1998. The application (inventor Garner) could only claim priority to a provisional dated June 4, 1998, less than a week later.

In an effort to prove an earlier priority date, Garner attempted to show an earlier actual reduction to practice.

In order to establish an actual reduction to practice, the inventor must prove that: (1) he constructed an embodiment or performed a process that met all the limitations of the interference count; and (2) he determined that the invention would work for its intended purpose.

Here, Garner provided his own testimony that he produced a working device in November 1997. However, when an inventor offers his or her own testimony regarding the facts of invention, it must be corroborated by independent evidence, typically the testimony of someone other than the inventor regarding the facts or the surrounding facts and circumstances. In an effort to meet this requirement, Garner offered the declaration of a third party, John Fondon. This declaration states that Fondon saw the device shown in photographs attached to Garner's declaration.

The Federal Circuit held that this was insufficient corroboration to establish an earlier reduction to practice. In order to effectively corroborate the inventor's testimony, the corroboration must be able to corroborate the relevant facts, namely that an embodiment was constructed and the invention would work for its intended purpose. Here, while the corroborating affidavit arguably confirmed the first requirement, it said nothing about whether the invention would work for its intended purpose. As a result, it was insufficient, and the court held Garner had not proven an earlier actual reduction to practice. As a result, the court affirmed the award of priority to Quate.

The BPAI refused to consider some additional evidence proffered by Garner (namely the specification of his application and provisional application) because it considered it to be "new evidence" offered without a showing of good cause as required under Rule 202(d)(2). The Federal Circuit held that this was incorrect, as the specifications were a part of the application file, and, while not explicitly relied upon earlier, did not constitute "new evidence" barred by the rule. The court did affirm the refusal to consider a new affidavit prepared after the BPAI ordered Garner to show cause why judgment should not be entered against him, as that truly was "new evidence." Considering the specifications did not change the outcome, however.

In construing Rule 202(d), the court gave deference to the USPTO's construction of the rule. The court distinguished an earlier case where the Federal Circuit held the USPTO was not entitled to deference in construing its rules on the basis that the rule at issue in that case had already been construed on two occasions by the Federal Circuit; in this case, the Federal Circuit had not yet construed Rule 202(d), so deference was appropriate. However, even under the deferential standard, the court still found that the USPTO's interpretation was inconsistent with the rule's language.

To read the full decision in In re Garner, click here.

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