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Metadata of conception documents could help independently corroborate inventor testimony of prior conception

| Mark KachnerAri Feinstein

KOLCRAFT ENTERPRISES, INC. V. GRACO CHILDREN’S PRODUCTS, INC.

Before Moore, Reyna, and Chen.  Appeals from the Patent Trial and Appeal Board.

Summary: Inventor testimony of prior conception must be independently corroborated.

Kolcraft owns two design patents directed to children’s play equipment.  Graco petitioned for inter partes review challenging both patents on several grounds, including obviousness based on a design patent.  Following institution, Kolcraft filed a Patent Owner Response that included a partially redacted inventor declaration and exhibits.  Seeking to establish prior conception, Kolcraft argued that at least one exhibit showed the features that were the subject of the obviousness challenge.  But neither the declaration nor the exhibits included specific dates of conception.  Subsequently, Kolcraft provided Graco with an unredacted declaration that included the alleged conception dates.  During depositions, one inventor testified that the dates in the declaration were based on metadata from the computer files associated with the declaration exhibits.  Kolcraft did not submit the computer files to the Board and they were not part of the administrative record.  The Board determined the inventor testimony of prior invention was not corroborated and that Graco’s obviousness reference was prior art.

The Federal Circuit affirmed.  It held that inventor testimony of prior conception was not sufficiently corroborated because all supporting evidence depended solely on the inventors. 

(Children’s Toys, Prior Conception; Prepared by Ari Feinstein)

Editor: Paul Stewart