Unorthodox Inventor Testimony at the PTAB

On September 12, 2014, the PTAB received rather unorthodox inventor testimony in a case where the Petitioner ultimately failed to prove the challenged claims unpatentable (Dynamic Drinkware LLC v. National Graphics Inc, case number 2:13-cv-00465, from Wisconsin Eastern Court).

Rather than making an effort to distinguish the allegedly anticipatory art, the patent owner offered a declaration of the inventor that the invention was not reduced to practice prior to the art’s actual filing date, and that it therefore could not be classified as prior art.
The PTAB pointed out that the submission was “unusual,” as “normally” testimony of an inventor is offered to establish the earliest invention date. The Board cautioned that the inventor’s current interests may have been “aligned against his patent” before taking up the issue of reduction to practice.

Before delivering its Final Written Decision, the Board outlined the law of reduction to practice, emphasizing that “the inventor must prove (1) that he constructed an embodiment or performed a process that meets all the claimed limitations of the invention, and (2) determined that the invention worked for its intended purpose.”

Applying these principles, and after considering a number of laboratory notebook entries and expert testimony regarding the injection-molded cosmetic case at issue, the Board decided against the Petitioner, finding that the invention was in fact reduced to practice prior to the filing date of the non-provisional application.