Search Team

Search by Last Name
A
B
C
D
E
F
G
H
I
J
K
L
M
N
O
P
Q
R
S
T
U
V
W
X
Y
Z

NFC Technology, LLC v. Matal

Thinness of Documentation Corroborating Inventorship Held Non-Fatal to Priority Claim

NFC Technology, LLC v. Matal, 2017 U.S. App. LEXIS 18164 (Fed. Cir. Sept. 20, 2017) (Newman, LOURIE, Hughes) (PTAB) (3 of 5 stars)

Fed Cir reverses IPR obviousness determination and remands. The PTAB erred in determining that NFC had failed to show that certain third-party prototyping activity predating a cited reference did not inure to NFC’s benefit. The opinion describes how the testimony and documentary evidence of record established NFC’s pre-critical date conception, and finds that the Board improperly discounted certain evidence establishing conception and inurement. The Board also relied improperly on Woodland Trust, 148 F.3d 1368 (Fed. Cir. 1998), to find that the absence of emails or other communications between the inventor and the third-party prototyper led to a conclusion that the prototyper was not acting according to the inventor’s design/direction. In Woodland Trust, as here, in view of the amount of time that had passed, it was not surprising that certain documents that might have existed in the past could not be produced at present for corroboration. Quoting In re Jolley, 308 F.3d 1317 (Fed. Cir. 2002), the opinion writes, “Corroboration of every factual issue contested by the parties is not a requirement of the law.” Op. at 12.

As the Board had not yet determined whether the prototype at issue actually reduced the claims to practice, remand is necessary.

KEYWORDS: INTER PARTES REVIEW; PRIORITY; INUREMENT