from the United States Patent and Trademark Office, Patent
Trial and Appeal Board in No. IPR2014-01198.
Auchter, McKool Smith, P.C., Washington, DC, argued for
appellant. Also represented by Jon Wright, Adam LaRock,
Sterne Kessler Goldstein & Fox, PLLC, Washington, DC.
J. McManus, Office of the Solicitor, United States Patent and
Trademark Office, Alexandria, VA, argued for intervenor
Joseph Matal. Also represented by Nathan K. Kelley, Monica
Barnes Lateef, Joseph Gerard Piccolo, Scott Weidenfeller.
Newman, Lourie, and Hughes, Circuit Judges.
LOURIE, CIRCUIT JUDGE.
Technology, LLC ("NFC") appeals from the final
written decision of the U.S. Patent and Trademark Office
Patent Trial and Appeal Board ("the Board") in an
inter partes review ("IPR") proceeding
concluding that claims 1-3 and 5 of U.S. Patent 6, 700, 551
("the '551 patent") are unpatentable as
obvious. See HTC Corp. v. NFC Tech., LLC, IPR
2014-01198, 2016 WL 497524, at *1 (P.T.A.B. Feb. 3, 2016)
("Final Decision"). Specifically, the
Board rejected NFC's argument that it had created a
prototype embodying the claimed invention before the priority
date of a cited reference, on the basis that NFC had not
adequately proven that certain third-party activity inured to
NFC's benefit. Id. at *5-15. For the reasons
that follow, we reverse the Board's determination as to
inurement, and remand for the Board to determine whether NFC
presented sufficient evidence that the prototype embodied the
owns the '551 patent, which generally relates to a
near-field communication device. See '551 patent
col. 1 ll. 9-12. Such devices use electromagnetic induction
to communicate information over very short distances. See
id. col. 1 ll. 14-18.
the application that became the '551 patent was filed,
two near-field communications standards existed: ISO/A and
ISO/B. Id. col. 1 ll. 19-26. According to the
'551 patent, relatively simple circuits could be used to
cause a device to communicate using a single standard; for
the device to be capable of communication using both
standards, however, it required a circuit that was more
complicated and consequently more expensive to manufacture.
Id. col. 1 ll. 44-60.
primary goal of the invention described and claimed in the
'551 patent is to allow for communication using both
standards in a circuit that is "simple in structure and
inexpensive to produce." Id. col. 1 ll. 61-65.
The claims reflect this functionality. See id. col.
7 l. 16-col. 8 l. 32. The '551 patent claims a priority
date of March 25, 1999, the date of the filing of a French
patent application. Final Decision, 2016 WL 497524,
Corp. ("HTC") petitioned for IPR of the '551
patent, alleging that claims 1-3 and 5 were unpatentable as
obvious over, inter alia, U.S. Patent 6, 122, 492
("Sears"). See Joint Appendix
("J.A.") 65. Sears bears a filing date of February
8, 1999. Final Decision, 2016 WL 497524, at *5. The
Board instituted review. J.A. 208.
responded that Bruno Charrat ("Charrat"), the
inventor of the '551 patent, had reduced the invention to
practice before Sears's priority date. See J.A.
257. Specifically, NFC argued that Charrat and his team at
INSIDE Technologies ("INSIDE") had reduced the
invention to practice "on or before November 1998."
J.A. 257. NFC's general theory of the case was that
Charrat had conceived the invention by June 1998, and then
worked with a team at INSIDE to design a device embodying the
invention ("the M210H device"). By September 1998,
NFC claimed, Charrat and his team had sufficiently developed
the device that they commissioned Concept Electronique
("CE"), a chip fabrication company, to generate
printed circuit board ("PCB") layouts for the M210H
device. NFC alleged that once Charrat and his team ordered
this prototype they wrote software for it, and, once they
received the prototype, tested it to ensure that it worked
for its intended purpose and verified that the prototype
conformed to their design.
presented evidence to support its contention that
Charrat's invention was reduced to practice before
Sears's priority date. The evidence included: (1) an
initial data sheet that purportedly described the M210H
device at a high level, dated June 26, 1998, see
J.A. 2335-60; (2) undated, unwitnessed excerpts from lab
notebooks purportedly authored by Charrat, see J.A.
2369-441; (3) PCB diagrams for the prototype generated by CE,
dated September 1998, see J.A. 2442-53; (4) a return
of a facsimile cover sheet from CE dated September 10, 1998,
with Charrat's signature under handwritten "OK FAB,
" although missing the four pages attached to the cover
sheet, see J.A. 2790; (5) a document entitled
"Test of Various Transmitters, " detailing tests of
the "M210H-2" antenna, authored by a Mr. de Moncuit
and allegedly detailing the results of tests of the
prototype, see J.A. 2819-53; and (6) a highlighted
wiring diagram purportedly used to verify that the prototype
accurately reflected the INSIDE design, dated February 5,
1999, and indicating that it reflected revision 3,
see J.A. 2854-58. Charrat also provided testimony
relating to his research and testing during the relevant
period. See generally J.A. 2957-76.
presented two main arguments in reply. HTC first argued that
the documentation was only corroborated by Charrat's own
testimony, and was therefore insufficient. J.A. 451-54. HTC
next argued that even if the evidence was sufficiently
corroborated, the M210H prototype did not work for its
intended purpose or embody all of the claim limitations. J.A.
455-66. For example, HTC argued that Charrat had not
developed the software necessary for the prototype to
function, that the tests were not ...