Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

Apator Miitors APS v. Kamstrup

United States Court of Appeals, Federal Circuit

April 17, 2018

APATOR MIITORS APS, Appellant
v.
KAMSTRUP A/S, Appellee

          Appeal 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.

          Mark Johnson, Renner Otto, Cleveland, OH, for appellee. Also represented by Kyle Bradford Fleming.

          Before Moore, Linn, and Chen, Circuit Judges.

          Moore, Circuit Judge.

         Apator 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.

         Background

         On June 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.

         The 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).

         Discussion

         I. Legal Standards

         An 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)[1]). 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).

         The 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").

         Conception 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 ...


Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.