Inventor’s Own Testimony Cannot Corroborate Evidence of Earlier Invention Date
In Re NTP, Inc. [2] (decided 8/1/11)By: Marc S. Johannes
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What This Means to You
- When establishing an earlier invention date, make certain that evidence corroborating the inventor’s testimony as to an earlier invention date stands on its own.
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Overview
The US Court of Appeals for the Federal Circuit (Federal Circuit) held that NTP, Inc., the patent owner of numerous patents subject to reexamination, failed to antedate certain prior art references because the evidence corroborating the inventor’s assertions of an earlier invention date relied upon the inventor’s own testimony.
In In Re NTP, Inc., the Federal Circuit upheld a decision by the Board of Patent Appeals and Interferences (“the Board”) that NTP failed to establish a reduction to practice preceding the critical date of a number of prior art references because the documentary evidence provided to corroborate the inventors’ affidavits did not stand on its own, requiring the inventors’ own testimony to corroborate the date of the documentary evidence and the nature of its content.
Case Background
This is the second of a series of cases involving patents owned by NTP, Inc. In this case, the Board affirmed a decision from the US Patent and Trademark Office concerning the unpatentability of several of NTP’s patents in view of a number of prior art references during reexamination of the subject patents.
NTP appealed this decision to the Federal Circuit, arguing that the invention date of the subject patents antedated the critical date of the prior art references applied in rejecting the claims. The Federal Circuit agreed with the Board that NTP failed to establish an invention date before the critical date of the prior art references because the inventors’ testimony was uncorroborated.
Decision Analysis
NTP asserted that the invention of the subject patents was made before the critical date of the prior art references based on its contention that the invention was reduced to practice prior to October 29, 1990, the critical date of the prior art references. The Federal Circuit pointed to the requirement that a party seeking to antedate a reference based on reduction to practice must present evidence of the actual reduction of practice of the invention prior to the effective date of the reference. The Federal Circuit also noted that it has long been the case that an inventor cannot rely on uncorroborated testimony to establish a prior invention date such that an inventor’s allegations of earlier invention alone are insufficient.
NTP provided declarations from the inventors of the subject patents testifying to an earlier reduction to practice date and also submitted several pieces of evidence to corroborate the inventor testimony. However, none of the evidence by itself provided the necessary corroboration. Instead, the evidence required further testimony from the inventors as to the nature and substance of what the evidence showed and further explanation as to why the evidence corroborated their testimony.
Takeaways
When swearing behind a reference, an inventor’s testimony regarding an earlier invention date is only the first step. Evidence corroborating the testimony must be produced that is of such character and weight as to establish the earlier invention date alleged by the inventor. Inventor’s testimony regarding the nature of the evidence cannot be used to corroborate the inventor’s testimony regarding the earlier filing date, so it is important that corroborating evidence stand on its own in establishing the earlier invention date.
