Takeaway: If a patent owner relies upon reduction of practice by a third party to pre-date a prior art reference, the patent owner must have proof beyond inventor testimony that it conceived of the claimed invention and that it communicated the claimed invention to the third party.

In its Final Written Decision, the Board found that the sole claim of the ’731 Patent is unpatentable. The ’731 Patent relates to “[t]he ornamental design for a multiple crock buffet server” “with two or more oval server bowl inserts situated adjacent opposite ends of the heated server base unit housing.” The parties accepted the Board’s interpretation of the claims from the Decision on Institution.

Patent Owner did not dispute that three references – Shi ’429, Shi ’889, and Lu ’763 – disclose the claimed design, but instead stated that none of these references are prior art. Shi ’729 is the earliest publication of the three, and was published on April 21, 2010. Patent Owner contended that the design claimed in the ’731 Patent was reduced to practice before that date, and provided declarations of the three named inventors in support of this contention. The inventors stated that the first prototype was manufactured by a third party company based on the inventors’ design in January 2010, and provided photographs of the prototype, as well as three subsequent prototypes. Patent Owner stated that all of the prototypes were disposed of in the ordinary course of business prior to the proceeding, therefore, the only evidence of their appearance are the photographs. Patent Owner also produced business records to corroborate the reduction to practice date.

Petitioner responded that because the third party, not the inventors, made the prototypes, the prototypes do not constitute a reduction to practice by the inventors, and that Patent Owner has not argued or established that the prototypes inure to the inventors’ benefit. Petitioner also stated that the photographs are insufficient to show that the prototypes embody the claimed design. Petitioner supported this contention with expert testimony stating that it would be impossible for one of ordinary skill in the art to determine whether the prototypes practice the claimed invention.

In its sur-reply, Patent Owner stated that it was not required to show that the inventors conceived of the claimed design because it has demonstrated actual reduction of practice prior to the Shi ’429 publication date. Patent Owner also stated that it had an agency relationship with the third party so the prototypes should inure to its benefit.

The Board stated that Petitioner bears the burden of persuasion to show that the challenged claim is unpatentable, but that it is Patent Owner’s burden to produce evidence supporting a date of invention before the earliest reference publication date. The Board noted that Patent Owner is relying upon reduction to practice, which requires the production of an article embodying the design. The Board held that the third party prototypes do not inure to Patent Owner’s benefit because Patent Owner did not show that it conceived of the design and communicated the design to the third party. Further, the Board was not persuaded that Patent Owner provided sufficient evidence to show that it conceived of the claimed design prior to April 21, 2010 because an inventor’s testimony standing alone is not enough to prove conception. The Board found that Patent Owner’s corroborating evidence did not address the claimed design, and noted an absence of any communication between it and the third party prior to the production of the January 2010 prototype.

Sensio, Inc. v. Select Brands, Inc., IPR2013-00500
Paper 33: Final Written Decision
Dated: February 9, 2015
Patent: D669,731
Before: Josiah C. Cocks, Thomas L. Gianetti, and Benjamin D.M. Wood
Written by: Wood
Related Proceedings: Select Brands, Inc. v. Sensio, Inc., No. 13-cv-2018 (KHV/GLR) (D. Kan.); IPR2013-00501; IPR2013-00580