Conception Must Be Shown—Reduction to Practice is Insufficient to Allude Conception Date

The United States Patent and Trademark Office’s Patent Trial and Appeal Board (“PTAB”) instituted an inter partes review of a design patent of a multiple crock buffet server and ruled that the patent at issue was unpatentable because it was anticipated and rendered obvious by the prior art.  Sensio, Inc. v. Select Brands, Inc., Case No. IPR2013-00500 (PTAB, Feb. 9, 2015) (Wood, APJ).

An inter partes review (“IPR”) is a trial proceeding conducted by the PTAB to review the patentability of one or more claims in a patent only on a ground that could be raised under anticipation and obviousness, and only on the basis of prior art consisting of patents or printed publications.

Petitioner Sensio filed for an IPR of Select Brands’ design patent and submitted three prior art references to support its claim of unpatentability, with the earliest publication date of these references being April 21, 2010.  Select Brands conceded that the three prior art references disclosed the claimed design, but argued that the reduction to practice of its design was prior to April 21, 2010 and, to that effect, antedated the prior art.

Relying on the inventors’ declarations that alleged that a Chinese company for Select Brands made a prototype embodying the claimed design at their direction in January 2010, Select Brands provided technical documents to corroborate the earlier reduction to practice date and argued that because it had demonstrated actual reduction to practice before the April 21, 2010 date, proof of conception was irrelevant.

The Board disagreed and held that inventor testimony alone is not enough—corroboration must be shown.  According to the Board, “the Federal Circuit’s view that conception must be shown whenever a party seeks the benefit of another party’s reduction to practice” supported their holding.

Therefore, the Board held that Select Brands’ design patent is unpatenable in light of each of the three prior art references submitted by Sensio.