A Post-Grant Lesson for Patent Prosecutors
Are You Properly Corroborating Your In Re Katz Declarations?
Every so often a decision comes out of the USPTO's Patent Trial & Appeal Board (PTAB) or the Federal Circuit that has immediate value for patent prosecutors. Last week, in EmeraChem Holdings, LLC v. Volkswagen Group of America, Inc.,the Federal Circuit considered the degree of corroboration necessary to disqualify a prior art reference as an inventor's own work. In EmeraChem the Cout made clear that such corroboration may be within the inventor declaration itself, but, it must be more than a mere naked assertion of inventorship.
In EmeraChem (here) petitioner Volkswagen sought Inter Partes Review (IPR) of Patent No. 5,599,758 (‘758 Patent). One of the references cited in the IPR was U.S. Patent No. 5,451,558 (‘558 reference). The ’558 reference lists four co-inventors, two of which are the sole co-inventors listed on the challenged ‘758 Patent assigned to EmeraChem. The ‘558 reference qualified as prior art under pre-AIA 102(e) since the “inventive entity” was different than the ‘758 patent.
In an attempt to disqualify the ‘558 reference as prior art, EmeraChem filed an inventor declaration signed by the two inventors of their ‘758 patent. The Declaration stated that the cited parts of the ‘558 reference were solely invented by them and not the other two listed inventors. No statements by the two remaining inventors listed on the ‘558 reference were provided by EmeraChem or Volkswagen.
The PTAB rejected the inventor declaration submitted by EmeraChem was not sufficient to prove that the ‘558 reference was not prior art under pre-AIA 102(e). The Board noted that EmeraChem did not call the other inventors of the ‘558 reference as witnesses and did not offer “any contemporaneous documentary evidence in support of the Campbell Declaration.” (pg. 4 of the opinion).
The Federal Circuit affirmed the Board’s decision rejecting the inventor’s declaration. The CAFC noted that the declaration itself “amount[ed] to a naked assertion” and that the declaration did not provide “any context, explanation, or evidence to lend credence to the inventor’s bare assertion.” (pg 6 of the opinion). The CAFC relied upon case law that highlighted the concern for corroborating evidence when an interested party is the one making the declaration. In this case, the inventors of the challenged patent were clearly “interested parties”. (pg 7 of the opinion).
But what about the sections of the Manual of Patent Examining Procedure (MPEP) that seem to suggest an unequivocal statement by inventors is enough?
The CAFC distinguished EmeraChem's reliance on MPEP §§715.01(a), 715.01(c)(I), and 2136.05 (and characterizations of case law cited therein).
The Court distinguished In re DeBaun, 687 f . 2d 459 (C.C.P.A. 1982), highlighting the fact that DeBaun attached a drawing to his declaration that corroborated the assertions made in the declaration. Therefore, the Court held that DeBaun does not “stand for the proposition that a declaration alone is always sufficient to support an inventor’s claim to inventorship.” (pg 8 of the opinion). Further, as to In re Katz, the Court focused on the significance of the fact that the two co-authors on Katz’s published article were explained in the declaration as mere teaching assistants. In Katz, the declaration was sufficient to rebut “the board’s inference that [the co-author’s] names were on the article because they were co-inventors.” (pg 9 of the opinion). The CAFC noted that in both Debaun and Katz, something more than a naked assertion by the inventor was needed.
As this case makes clear, the MPEP does not have the force and effect of the law. As pre-AIA applications will be pending for many years to come, prosecutors would be wise to bolster their In re Katz declarations with more than just mere conclusions of inventorship. Ideally, the inventors would explain the contributions of the co-authors in a manner that makes clear that their contributions do not rise to the level of inventorship.
Scott A. McKeown is an author of the Patents Post Grant.