Conception and Reduction to Practice Dates Matter | Jones Day
In a recent decision, the Patent Trial and Appeals Board found that the disputed claims regarding transferring digital content were not unpatentable under 35 U.S.C. § 103(a) after determining that the prior art cited by the petitioner did not antedate the corroborated conception date of the disputed claims. Unified Patents, LLC v. Flexiworld Technologies, Inc., IPR2022-00775, Paper 41 (November 1, 2023).
The dispute began when Unified Patents (the Petitioner), filed a petition challenging Flexiworld Technologies, Inc.’s (the Patent Owner) patent. Unified requested inter partes review of claims 27 and 28 of Patent No. 9,836,257 B2 (“the ‘257 patent”) based on obviousness grounds, where claim 28 depends on claim 27. The ‘257 patent claims “[a] method of transferring digital content from a mobile wireless information apparatus such as a smart phone … to a wireless output device associated with a television by short range wireless communication.” The PTAB highlighted that pre-AIA § 103(a) applied to the request because the ‘257 patent issued from an application that has an effective priority date before the March 16, 2013, transition date of the AIA. Each ground of obviousness asserted by Unified relied on either the Olgaard reference in view of Moghadam, or the Acharya reference in view of Griffiths. The PTAB’s decision focused on whether Olgaard and Acharya qualify as prior art under 35 U.S.C. § 102(e), where the pre-AIA statutes allowed a patent owner to “swear behind” the effective date of prior art references by showing prior conception and diligence in reduction to practice.
Unified had the burden of persuasion to show that the references relied upon are prior art at the time of the claimed invention. Olgaard’s date was October 24, 2000, while Acharya’s was December 22, 2000. Unified argued that the ‘257 patent is entitled its provisional filing date of January 19, 2001. In response, Flexiworld provided evidence that the challenged claims should be given a conception date and priority date of at least October 22, 2000, which is before the filling dates of both references.
The PTAB examined the credibility of Flexiworld’s evidence of how the inventors determined when the challenged claims were conceived. To determine if there was sufficient corroboration of the evidence, the PTAB used a rule-of-reason analysis where “all pertinent evidence is examined in order to determine whether the inventor’s story is credible.” Fleming v. Escort Inc., 774 F.3d 1371, 1377 (Fed. Cir. 2014) (quoting Sandt Tech., Ltd. v. Resco Metal & Plastics Corp., 264 F.3d 1344, 1350 (Fed. Cir. 2001)).
Flexiworld provided draft provisional patent applications with metadata that indicated that the draft was last modified October 22, 2000 (prior to the date of both alleged prior art references). To support its position that conception was before the date in question, Flexiworld provided a declaration from the inventor, who was the author and custodian of the provisional application drafts. Unified countered that Flexiworld did not provide “independent” evidence to corroborate the conception date as required. Unified argued that the corroboration was insufficient because the draft was created and under control of the inventor-declarant.
The PTAB viewed all evidence under the rule-of-reason analysis and found that the evidence supported Flexiworld’s contention that the conception date of claims 27 and 28 was before October 24, 2000, and Unified did not show otherwise by a preponderance of the evidence. The PTAB found the testimony of the inventor was credible and that metadata was “the most reliable indicator of the latest date each draft was completed.” Further, the PTAB disagreed with Unified that metadata evidence is not corroborative because it originated with the inventor. The PTAB stated the metadata for each draft stood as its own evidence since each draft independently contained the conception of each disputed claim. Additionally, the PTAB found metadata was independent from the inventor’s declaration because the operating system used was automatic and contemporaneous in time.
Because the PTAB found the conception date of the claimed invention was before October 22, 2000, the panel next considered reduction to practice. Flexiworld argued that the inventor and co-inventor diligently reduced the invention to constructive practice via the patent application filing by continuously modifying the disclosures when preparing to file three corresponding provisional applications between October 19, 2000, and January 19, 2001. Further, Flexiworld stated any gaps in the time between the applications were due to the holidays of Thanksgiving, Christmas, and New Year’s Day. Unified disagreed stating there were long gaps not accounted for, gaps spanning from 14 to 21 days between the filings of the drafts, and that Flexiworld did not provide evidence regarding these gaps besides uncorroborated testimony of the inventor. Further, Unified argued that since the provisional drafts led to three provisional applications and the ‘257 patent only claimed priority to the provisional filed last, Flexiworld cannot rely on the earlier drafts because that was effectively “claiming priority to these provisional applications and their drafts.”
To determine if there was diligent reduction to practice, the PTAB stated, “the point of the diligence analysis . . . is to assure that, in light of the evidence as a whole, ‘the invention was not abandoned or unreasonably delayed.’” Perfect Surgical Techniques, Inc. v. Olympus Am., Inc., 841 F.3d 1004, 1009 (Fed. Cir. 2016) (quoting Monsanto v. Mycogen, 261 F.3d at 1379).
The PTAB found that all three drafts showed reasonable continuous diligence even with the gaps in dates as it was a holiday-filled period between the application filings. The PTAB acknowledged that although the ‘257 patent did not claim priority to two of the provisional applications, since the inventors periodically updated the drafts during the period in question, the inventors provided “their conception to the public without abandonment and without significant delay.” Further, the PTAB stated that although the ‘257 patent was filed too late to be entitled to a priority date corresponding to one of the first two provisional applications, this occurred outside the critical period where diligence is required. The PTAB explained the critical period “begins just prior to the competing reference’s effective date and ends on the date of the invention’s reduction to practice”. See Perfect Surgical, 841 F.3d at 1007 (citing Monsanto v. Mycogen, 261 F.3d at 1363)).
The PTAB found that since the inventor testimony corroborated the conception date no later than October 22, 2000, and that there was reasonable continuous diligence in reduction to practice in the critical period, the corroborated conception date for claims 27 and 28 was established before the dates of both Olgaard and Acharya. Thus, neither reference can be considered prior art under 35 U.S.C. § 102(e) and Unified did not provide another basis for obviousness that was not dependent on these two references. The PTAB held that Unified did not show claims 27 and 28 of the ‘257 patent were unpatentable under 35 U.S.C. § 103.
Takeaways:
This decision demonstrates two important takeaways. First, the case explains how metadata can count as independent evidence to corroborate inventor testimony regarding conception dates even if the metadata originated with the inventor. Second, this case depicts the importance of reasonable continuous diligence and what is acceptable in terms of gaps in time during the critical period to establish a conception date.
