Swearing Behind: Don’t Get Stuck in a Catch-22 of Corroboration

By: Emily Tait

The Federal Circuit’s recent decision in Apator Miitors ApS v. Kamstrump A/S, No. 2017-1681 (Fed. Cir. Apr. 17, 2018) (Moore, joined by Linn and Chen) serves as another reminder to sufficiently corroborate inventor testimony when attempting to swear behind the effective filing date of a prior art reference pursuant to pre-AIA 35 U.S.C. §102(g). In Apator, insufficient corroborating evidence left the patent owner in a “Catch-22 of Corroboration.”

Inter partes review was initiated on two of Apator’s patents related to an ultrasonic consumption meter.  In its Final Written Decision, the PTAB found that a claim of one patent was anticipated by a reference called Nielsen and a claim of the other patent would have been obvious in view of Nielsen and another reference.  On appeal, the issue was whether Apator could swear behind Nielsen by showing conception and reduction to practice prior to Nielsen’s effective filing date of March 25, 2010—which was only eighteen days before Apator’s own effective filing date of April 12, 2010.  At trial, Apator proffered the following evidence: (i) an inventor declaration from Jens Drachmann (“Drachmann Declaration”), in which Mr. Drachmann declared he conceived of his invention prior to March 25, 2010; (ii) an email from Mr. Drachmann to a third party Svein Tunheim dated February 15, 2010 (“first Tunheim email”) which, according to the Drachmann Declaration, attached an image file called “mechanics6.png”; (iii) a second email from Mr. Drachmann to Mr. Tunheim dated March 22, 2010 (“second Tunheim email”) which, according to the Drachmann Declaration, attached a presentation called “UFM++ venture.pdf”); (iv) an email from Drachmann to another third party Rasmus Bjerngaard dated March 22, 2010 (“Bjerngaard email”) which, according to the Drachmann Declaration, attached the UFM++ venture.pdf; and (v) a number of drawings which, according to the Drachmann Declaration, were created before Nielsen’s effective filing date (and, specifically, between February 15, 2010 and March 22, 2010).

Rejecting Apator’s attempt to swear behind Nielsen, the PTAB pointed to the insufficiency of Apator’s evidence for having exclusively relied upon Mr. Drachmann’s testimony, explaining that “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[.]”  Apator, slip op. at 3 (citations omitted).  The Federal Circuit affirmed, finding that substantial evidence supported the PTAB’s determination that Mr. Drachmann’s testimony was insufficiently corroborated.  The Federal Circuit explained that, while the sufficiency of the proffered corroboration is determined by a “rule of reason” analysis in which all pertinent evidence is examined, such analysis still requires that the evidence “‘not depend solely on the inventor himself.’”  Id. at 4 (quoting Cooper v. Goldfarb, 154 F.3d 1321, 1330 (Fed. Cir. 1998)).

Notably, the evidence that Apator proffered to corroborate the Drachmann Declaration—namely, the “mechanics6.png” which Apator claimed was attached to the first Tunheim email, the “UFM++ venture.pdf” file that Apator claimed was attached to the second Tunheim email and the Bjerngaard email, and the drawings which allegedly were created before Nielsen’s effective filing date—needed to be propped up by the Drachmann Declaration itself.  Indeed, while the first Tunheim email stated “[a] sample is attached” and the second Tunheim email and Bjerngaard email refer to a “presentation[,]” the Drachmann Declaration provided the sole basis to support Apator’s claim that these emails contained an attachment and its characterization of what the attachment was.  Apator, slip op. at 6.  As to the drawings, they indicated that they were modified after the Nielsen effective filing date and the Drachmann Declaration provided the sole basis to support Apator’s claim that they were in fact created earlier.  Id.  Thus, “[t]he evidence proffered by Mr. Drachmann is stuck in a catch-22 of corroboration: Apator attempts to corroborate Mr. Drachmann’s testimony with the emails and the drawings, but the emails and drawings can only provide that corroboration with help from Mr. Drachmann’s testimony.”  Id. (emphasis added). That Apator’s evidence was allegedly “unrebutted” was of no consequence, as Apator carries the burden under § 102(g) to “prove Mr. Drachmann did conceive of his meter prior to Nielsen’s effective filing date, not that Kamstrup prove Mr. Drachmann did not.”  Id.