Insufficiently Corroborated Inventor Testimony Regarding Reduction to Practice Does Not Effectively Swear Behind a Critical Date

In re NTP, Inc., Nos. 2010-1243, -1254, -1263, -1274, -1275, -1276, -1278( Fed. Cir. Aug. 1, 2011)

Holding:

None of NTP’s documents or software files sufficiently corroborates the inventors’ alleged actual reduction to practice prior to the critical date at issue under 37 C.F.R. § 1.131. Slip op. at 19, 21.

A multi-volumed publication received and catalogued at a foreign library under its general library practice remains a prima facie 35 U.S.C. § 102(b) prior art reference after the Patentee fails to carry the burden to prove either that the document was tampered with after the critical date at issue, or the document was not reasonably accessible despite the fact that library’s catalogue system is online and searchable by author, title, classification number, subject heading. Slip op. at 26-27.

Neither hindsight reasoning nor common sense argument constitutes proper grounds for claim rejection based on obviousness. Slip op. at 29-30, 32-33.
A prior art reference is sufficiently enabled for the purpose of anticipating by disclosing a protocol that can guide one of ordinary skill in the art to implement the disclosed system. Slip op. at 35.

Relevant Facts:

This is the companion opinion of the Federal Circuit addressing NTP’s appeals of the BAPI’s decision affirming the rejections of claims in the other seven of NTP’s patents, i.e., United States Patent Nos. 5,436,960 (’960 patent), 5,438,611 (’611 patent), 5,479,472 (’472 patent), 5,625,670 (’670 patent), 5,631,946 (’946 patent), 5,819,172 (’172 patent), and 6,067,451 (’451 patent). Slip op. at 3-4. After finding the BAPI’s construction of the term “electronic mail” unreasonably broad, the Federal Circuit remands in part for further proceedings. Id. at 42.

Comments:

Note that the Federal Circuit lays out major rules for the purpose of antedating references under 37 C.F.R. § 1.131:

A party seeking to antedate a reference based on reduction to practice must present evidence of the actual reduction to practice of the invention prior to the effective date of the reference. 37 C.F.R. § 1.131(b). An inventor cannot rely on uncorroborated testimony to establish a prior invention date. Id. It has long been the case that an inventor’s allegations of earlier invention alone are insufficient – an alleged date of invention must be corroborated. Medichem S.A. v. Rolabo, S.L., 437 F.3d 1157, 1170 (Fed. Cir. 2006); Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368, 1371 (Fed. Cir. 1998). “[E]vidence is assigned probative value and collectively weighed to determine whether reduction to practice has been achieved.” Medichem, 437 F.3d at 1170. “Sufficiency of corroboration is determined by using a ‘rule of reason’ analysis, under which all pertinent evidence is examined when determining the credibility of an inventor’s testimony.” Id.

Slip op. at 15.

For obviousness finding, note that the Federal Circuit emphasizes the importance of not to “rely on hindsight reasoning to piece together elements to arrive at the claimed invention.” Slip op. at 29, and frankly ignores the “mere common sense” argument advanced by the PTO. Id. at 32-33.

In rel Hall, 781 F.2d 897 (Fed. Cir. 1986), remaining a good law on qualifying printed publications as 35 U.S.C. 102(b) prior art, finds itself a Norwegian cousin.