from the United States Patent and Trademark Office, Patent
Trial and Appeal Board in No. IPR2015-01403.
Richard Joseph Basile, St. Onge Steward Johnston & Reens,
LLC, Stamford, CT, argued for appellant. Also represented by
Todd M. Oberdick.
Johnson, Renner Otto, Cleveland, OH, for appellee. Also
represented by Kyle Bradford Fleming.
Moore, Linn, and Chen, Circuit Judges.
Miitors ApS ("Apator") appeals from a Final Written
Decision of the United States Patent and Trademark Office
Patent Trial and Appeal Board ("Board") in an inter
partes review of U.S. Patent No. 8, 893, 559 finding claim 2
was anticipated by Nielsen, U.S. Patent App. Pub. No.
2012/0006127, and claim 10 would have been obvious in light
of Nielsen and Körner, European Patent App. No. 1798528.
The primary issue on appeal is whether Apator can swear
behind Nielsen by showing conception and reduction to
practice prior to Nielsen's effective filing date.
Because substantial evidence supports the Board's finding
that Apator failed to sufficiently corroborate inventor Jens
Drachmann's testimony of conception, we affirm.
12, 2015, Kamstrup A/S ("Kamstrup") filed a
petition for inter partes review of the '559 patent, and
the Board instituted review of, among other things, claims 2
and 10 based in part on Nielsen. During trial, Apator
attempted to swear behind Nielsen's effective filing date
of March 25, 2010, a mere eighteen days before its own
effective filing date of April 12, 2010. In support, Apator
proffered a declaration from Mr. Drachmann ("Drach-mann
Declaration") in which Mr. Drachmann declares he
conceived of his invention, an ultrasonic consumption meter,
prior to Nielsen's effective filing date. Apator further
proffered: an email from Mr. Drachmann to Svein Tunheim dated
February 15, 2010 ("first Tunheim email") that the
Drachmann Declaration states attached an image file titled
"mechanics6.png" ("mechanics6 file"); an
email from Mr. Drachmann to Mr. Tunheim dated March 22, 2010
("second Tunheim email") that the Drachmann
Declaration states attached a presentation titled "UFM
venture.pdf" ("UFM venture file"); an email
from Mr. Drachmann to Rasmus Bjerngaard dated March 22, 2010
("Bjerngaard email") that the Drachmann Declaration
states attached the UFM venture file; and a number of
drawings that the Drachmann Declaration states were created
between February 15, 2010, and March 22, 2010.
Board rejected Apator's attempt to swear behind Nielsen,
determining in its Final Written Decision that claim 2 was
anticipated by Nielsen and claim 10 was obvious based in part
on Nielsen. J.A. 17-18. The Board found that, "other
than Mr. Drachmann's own testimony, [Apator] has
presented no evidence that Mr. Drachmann conceived the
[meter] prior to the effective filing date of Nielsen."
J.A. 16. Since "mere unsupported evidence of the alleged
inventor, on an issue of priority, as to . . . conception and
the time thereof, can not be received as sufficient proof of
. . . prior conception, " the Board reasoned, even
"accepting as true every statement in Mr.
Drachmann's Declaration, . . . [Apator] has failed to
produce sufficient evidence" to swear behind Nielsen.
J.A. 16 (quoting Price v. Symsek, 988 F.2d 1187,
1194-95 (Fed. Cir. 1993)). Apator appeals. We have
jurisdiction under 28 U.S.C § 1295(a)(4).
inventor can swear behind a reference by proving he conceived
his invention before the effective filing date of the
reference and was diligent in reducing his invention to
practice after that date. Perfect Surgical Techniques,
Inc. v. Olympus Am., Inc., 841 F.3d 1004, 1007 (Fed.
Cir. 2016) (citing 35 U.S.C. § 102(g)). It is well
established, however, that when a party seeks to prove
conception through an inventor's testimony the party must
proffer evidence, "in addition to [the inventor's]
own statements and documents, " corroborating the
inventor's testimony. Mahurkar v. C.R. Bard,
Inc., 79 F.3d 1572, 1577 (Fed. Cir. 1996); Hahn v.
Wong, 892 F.2d 1028, 1032 (Fed. Cir. 1989). While the
requirement of corroboration exists to prevent an inventor
from "describ[ing] his actions in an unjustifiably
self-serving manner, " Chen v. Bouchard, 347
F.3d 1299, 1309 (Fed. Cir. 2003), "[e]ven the most
credible inventor testimony is a fortiori required
to be corroborated by independent evidence, "
Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157,
1171-72 (Fed. Cir. 2006).
sufficiency of the proffered corroboration is determined by a
"rule of reason" analysis in which all pertinent
evidence is examined. In re NTP, Inc., 654 F.3d
1279, 1291 (Fed. Cir. 2011). Even under the "rule of
reason" analysis, however, the "evidence of
corroboration must not depend solely on the inventor
himself." Cooper v. Goldfarb, 154 F.3d 1321,
1330 (Fed. Cir. 1998); see also Hahn, 892 F.2d at
1033 (corroborating evidence must be "independent of
information received from the inventor").
is a question of law predicated on subsidiary factual
findings, one of which is the sufficiency of corroboration.
REG, 841 F.3d at 958. We review the Board's
legal conclusions de novo and its factual findings for
substantial evidence. Id. Substantial evidence
"means such relevant evidence as a reasonable mind might
accept as adequate to support a conclusion, "
Con-sol. Edison Co. v. NLRB, 305 U.S. 197, 229
(1938), and "the possibility of drawing two inconsistent
conclusions from the evidence" will not render ...