{"id":1763,"date":"2017-09-21T00:06:58","date_gmt":"2017-09-21T04:06:58","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1763"},"modified":"2017-11-25T12:35:31","modified_gmt":"2017-11-25T17:35:31","slug":"corroboration-of-the-inventor-is-necessary-but-evaluated-under-a-rule-of-reason-considering-the-totality-of-the-circumstances","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1763","title":{"rendered":"Corroboration of the Inventor is Necessary, but Evaluated Under a Rule of Reason, Considering the Totality of the Circumstances"},"content":{"rendered":"

In NFC Technology, LLC v. Matal<\/a>, [2016-1808] (September 20, 2017), the Federal Circuit reversed the PTAB’s final written decision that claims of U.S. Patent 6,700,551 we obvious, and remanded for the board to determine whether NFC\u00a0presented sufficient evidence that the prototype embodied\u00a0the claimed invention<\/p>\n

The Board rejected NFC\u2019s attempt to antedate the prior art with a prototype\u00a0embodying the claimed invention before the priority date\u00a0of the prior art. \u00a0The Board held that even assuming that the prototype embodied the\u00a0invention, NFC had not adequately established that a third party’s\u00a0fabrication of the prototype inured to NFC’s benefit.<\/p>\n

The Federal Circuit said that\u00a0an inventor\u2019s testimony, standing alone, is insufficient\u00a0to prove conception\u2014some form of corroboration\u00a0must be shown. \u00a0However, there is no particular formula that an\u00a0inventor must follow in providing corroboration of conception. \u00a0Corroboration is determined by a “rule of reason” analysis, in which an evaluation of all pertinent evidence\u00a0must be made so that a sound determination of the credibility\u00a0of the inventor\u2019s story may be reached.<\/p>\n

The Federal Circuit found that when taken as a whole, the\u00a0documents corroborate Charrat\u2019s account of conception. \u00a0While the Board was unpersuaded that the NFC had provided sufficient evidence to demonstrate that the prototype was\u00a0produced according to the inventor’s design, the Federal Circuit Federal Circuit found that dorroboration of
\nevery factual issue contested by the parties is not a requirement
\nof the law. \u00a0The Federal Circuit concluded that on the fact,\u00a0particularly considering\u00a0the amount of time that has passed, the inventor’s account was adequately corroborated.<\/p>\n

The Federal Circuit noted that the Board\u2019s analysis raised the question of\u00a0who, if not the inventor, designed the prototype — the named inventor\u00a0is the only source identified by the evidence for the design
\nof the prototype. There was no record evidence of\u00a0any other employee communicating with the fabricator. \u00a0The Federal Circuit concluded that under the rule of reason, the totality of the evidence\u00a0establishes the credibility of the inventor’s account. \u00a0Thus, the Board erred in concluding that NFC had not\u00a0submitted adequate evidence of conception, and in\u00a0finding that the inventor’s account was not adequately corroborated.
\nwas not supported by substantial evidence.<\/p>\n

The Federal Circuit remanded, however, so that the Board could determine whether the prototype embodied the claimed invention.<\/p>\n

 <\/p>\n","protected":false},"excerpt":{"rendered":"

In NFC Technology, LLC v. Matal, [2016-1808] (September 20, 2017), the Federal Circuit reversed the PTAB’s final written decision that claims of U.S. Patent 6,700,551 we obvious, and remanded for the board to determine whether NFC\u00a0presented sufficient evidence that the … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[59],"tags":[],"class_list":["post-1763","post","type-post","status-publish","format-standard","hentry","category-priority"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1763","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1763"}],"version-history":[{"count":2,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1763\/revisions"}],"predecessor-version":[{"id":1834,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1763\/revisions\/1834"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1763"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1763"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1763"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}