Wednesday, April 18, 2018

Apator case deals with "catch-22" of missing email attachments

Corroboration of inventor testimony was at issue:

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).

Of the evidence:

Substantial evidence supports the Board’s finding
that Apator failed to sufficiently corroborate
Mr. Drachmann’s testimony of conception prior to the
effective filing date of Nielsen. Apator has failed to
proffer any evidence of Mr. Drachmann’s conception that
is not supported solely by Mr. Drachmann himself.
In the first Tunheim email, for example,
Mr. Drachmann writes, “I have found the basis for the
mechanical assembly of the meter” including “several new
things that I didn’t have before.” J.A. 808. He writes, “[a]
sample is attached” and references “completely new
mechanical solutions (as seen in the picture).” J.A. 808.
The Drachmann Declaration then states that the first
Tunheim email attached the mechanics6 file. J.A. 795,
809. Apator contends this evidence corroborates
Mr. Drachmann’s testimony that he conceived of the
meter depicted in the mechanics6 file by the February 15,
2010, date of the first Tunheim email and prior to Nielsen’s
effective filing date. But as the Board noted, “there
are no indicia in either the body or header of the email
indicating a file is attached, let alone a file entitled ‘mechanics6’.”
J.A. 13.


The 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. The first Tunheim email states that “[a]
sample is attached,” but we must rely on
Mr. Drachmann’s testimony to learn that the first Tunheim
email has an attachment, and we must rely on his
testimony again to learn that that attachment is the
mechanics6 file. The second Tunheim and Bjerngaard
emails suffer from the same problem: while the emails
reference a “presentation,” it is only by resort to
Mr. Drachmann’s testimony that we can know either
email has an attachment and that attachment is the
UFM++ venture file.


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