Wednesday, April 04, 2018

"Reduction to practice" discussed in Raytheon v. Sony

Significantly, an inventor’s testimony alone is insufficient
to establish an earlier reduction to practice. Medichem,
437 F.3d at 1169–71. Instead, a party seeking to
prove an actual reduction to practice must proffer evidence
corroborating that testimony. Id. at 1170. “Sufficiency
of corroboration is determined by using a ‘rule of
reason’ analysis, under which all pertinent evidence is
examined when determining the credibility of an inventor’s
testimony.” Id.; Cooper, 154 F.3d at 1330. Whether
a patentee reduced its invention to practice is a mixed
question of law and fact. REG Synthetic Fuels, LLC v.
Neste Oil Oyj, 841 F.3d 954, 958 (Fed. Cir. 2016); Steed,
802 F.3d at 1318–20; Cooper, 154 F.3d at 1327. We
review the Board’s legal conclusions de novo and its
underlying factual findings for substantial evidence.
REG, 841 F.3d at 958; Steed, 802 F.3d at 1318–20;
Cooper, 154 F.3d at 1327.

Much of the parties’ briefing and supporting evidence
related to Raytheon’s reduction to practice contention are
designated confidential. Accordingly, we do not describe
these documents in detail here. For purposes of our
analysis, it is sufficient to address Raytheon’s arguments
at a high level of generality. During the IPR proceedings,
the inventors testified that they reduced to practice the
subject matter recited in the claims by the end of 1990—
more than nine months before Bertin’s September 1991
filing date—while working on a project for their employer
and original assignee, Hughes Aircraft Company

Of note

We reject, moreover, Raytheon’s legal arguments as to
why the Board erred. First, Raytheon argues that the
Board erred by requiring every point of the reduction to
practice be disclosed in the corroborating evidence, which
Raytheon contends is inconsistent with the rule of reason
standard. Raytheon is correct that corroborating evidence
need not disclose each and every aspect of the claimed
invention. See Cooper, 154 F.3d at 1331 (“[T]he law does
not impose an impossible standard of independence on
corroborative evidence by requiring that every point of a
reduction to practice be corroborated by evidence having a
source totally independent of the inventor[.]” (internal
quotation marks omitted)); see also Fleming v. Escort Inc.,
774 F.3d 1371, 1377 (Fed. Cir. 2014). But the Board did
not require such proof here. As described above, the
Board determined that the corroborating evidence contradicted
the inventor’s testimony and therefore could not be
sufficiently corroborative. This conclusion is reasonable
in view of the evidence. Cf. Woodland Tr. v. Flowertree
Nursery, Inc., 148 F.3d 1368, 1371 (Fed. Cir. 1998) (explaining
that, in evaluating the rule of reason, courts take
into account “contradiction or impeachment of the witness’

Footnote 3 refers to an invention disclosure:

Before the Board, Raytheon also relied on an
August 1990 invention disclosure and a November 1990
white paper. On appeal, however, Raytheon disclaims
reliance on those documents. See Appellant Br. 15 n.8;
Oral Argument at 12:28–13:35, Raytheon Co. v. Sony
Corp. (No. 2017-1554), http://oralarguments.cafc.uscourts.
gov/default.aspx?fl=2017-1554.mp3 (“[W]e limited the
scope of the evidence that we’re relying upon.”).


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