Kolcraft Enterprises, Inc. v. Graco Children's Products, Inc , 927 F.3d 1320 ( 2019 )

United States Court of Appeals
for the Federal Circuit
______________________
KOLCRAFT ENTERPRISES, INC.,
Appellant
v.
GRACO CHILDREN'S PRODUCTS, INC.,
Appellee
______________________
2018-1259, 2018-1260
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2016-
00816, IPR2016-00826.
______________________
Decided: July 2, 2019
______________________
KYLE WALLENBERG, Niro McAndrews LLC, Chicago,
IL, argued for appellant. Also represented by RAYMOND P.
NIRO, JR.
JOHN W. HARBIN, Meunier Carlin & Curfman, LLC, At-
lanta, GA, argued for appellee. Also represented by
GREGORY JOSEPH CARLIN, WALTER HILL LEVIE, III, WARREN
JAMES THOMAS.
______________________
Before MOORE, REYNA, and CHEN, Circuit Judges.
2 KOLCRAFT ENTERPRISES, INC. v. GRACO CHILDREN'S
PRODUCTS, INC.
REYNA, Circuit Judge.
Kolcraft Enterprises, Inc. appeals the decision of the
United States Patent Trial and Appeal Board finding U.S.
Design Patent Nos. D604,970 and D616,231 unpatentable
as obvious in light of the prior art. The primary issue on
appeal is whether Kolcraft Enterprises, Inc. antedated the
prior art with evidence of its prior conception, diligence,
and reduction to practice. The Board determined that
Kolcraft Enterprises, Inc. did not. We agree. Accordingly,
we affirm.
BACKGROUND
Kolcraft Enterprises, Inc. (“Kolcraft”) is the assignee of
U.S. Design Patent No. D604,970 S (“the ’970 patent”) and
U.S. Design Patent No. D616,231 S (“the ’231 patent”). The
’970 and ’231 patents are both titled “Exposed Legs for a
Play Yard” and have an effective filing date of November 5,
2004. Each patent has one claim.
The ’970 patent contains seven figures. Figures 1 and
2 are depicted below.
J.A. 48–49. Figure 1 is “a perspective view of exposed legs
for a play yard,” and Figure 2 is “a front view of the design
of FIG. 1.” J.A. 46, 48–49. The ’970 patent also states that
“[t]here is no fabric covering the exposed legs shown in any
KOLCRAFT ENTERPRISES, INC. v. GRACO CHILDREN'S 3
PRODUCTS, INC.
of FIGS. 1–7.” J.A. 46. The dashed lines do not form part
of the claimed design. See MPEP § 1503.02 (9th ed. 2018).
The ’231 patent has five figures. Figures 1 and 2 are
provided below. Figure 1 is “a perspective view of a playard
with exposed legs.” J.A. 52. Figure 2 is “a front view of the
playard of FIG. 1.” Id. “There is no fabric covering the
exposed legs shown in any of FIGS. 1–5.” Id.
On March 30, 2016, Graco Children’s Products, Inc.
(“Graco”) filed a petition for inter partes review (“IPR”)
challenging the ’970 patent. A day later, Graco filed a sec-
ond IPR petition challenging the ’231 patent. Graco pro-
posed eleven grounds of unpatentability for each patent,
including a ground for each patent that the claim is obvious
in light of U.S. Design Patent No. D494,393 assigned to
Chen (“Chen ’393”). The United States Patent Trial and
Appeal Board (“Board”) instituted a single trial addressing
both patents on the asserted grounds related to Chen ’393.
Kolcraft did not submit a preliminary owner response
to Graco’s petitions, but it filed a six-page Patent Owner
4 KOLCRAFT ENTERPRISES, INC. v. GRACO CHILDREN'S
PRODUCTS, INC.
Response 1 after the Board instituted trial. In its Patent
Owner Response, Kolcraft included a declaration signed by
inventors Damon Oliver Casati Troutman and Edward B.
Bretschger (“Inventor Declaration”), with Exhibits A–H
appended to the declaration. The Patent Owner Response
argued that at least one of Exhibits A–H depicted features
of the claimed invention identified by the Board: (1) curved
legs that bow outward; (2) no fabric covering the exposed
legs; and (3) outward flaring at the top of the legs. Exhibits
A–H are a collection of photos and sketches of play yards
and instructions for assembling the prototype of the play
yard that Troutman and Bretschger claim to have in-
vented. Neither the Inventor Declaration discussing the
exhibits nor the exhibits themselves included specific dates
of conception. The Inventor Declaration redacted the dates
when the exhibits were purportedly created, using blank
spaces where relevant dates would have been to show that
the inventions described in the ’970 and ’231 patents were
conceived of and reduced to practice on “a date prior to Jan-
uary 7, 2004,” the effective filing date of Chen ’393. J.A.
1181–84.
In March 2017, Graco deposed inventors Troutman and
Bretschger. Before the depositions took place, Kolcraft pro-
vided Graco with an unredacted version of the inventors’
declaration, where the blank spaces were replaced with al-
leged dates of conception and reduction to practice. When
questioned about the source of these dates, inventor Trout-
man testified that the dates were based on metadata asso-
ciated with the computer files containing the exhibits.
Graco filed under seal with its reply the transcripts of
Bretschger’s and Troutman’s depositions. One day before
the July 6, 2017 oral hearing, Kolcraft filed under seal an
unredacted version of the Inventor Declaration attaching
1 Kolcraft filed the same Patent Owner’s Response
for each IPR.
KOLCRAFT ENTERPRISES, INC. v. GRACO CHILDREN'S 5
PRODUCTS, INC.
the exhibits in paper form. Kolcraft did not file with the
Board the computer files of the exhibits containing the
metadata showing the purported dates of conception. Dur-
ing the oral hearing before the Board, Kolcraft admitted
that the unredacted version of the Inventor Declaration
was “not in the record.” J.A. 2006.
At trial, the Board addressed whether Chen ’393 qual-
ifies as prior art to the patents-in-suit and whether the pa-
tents-in-suit are obvious in view of Chen ’393. The Board
concluded that Chen ’393 is prior art because Kolcraft
failed to show that conception, diligence, and reduction to
practice of the ’970 and ’231 patents occurred before Chen
’393 was filed. The Board also found that the testimony of
inventors Bretschger and Troutman—explaining that they
conceived of the play yard invention before the effective fil-
ing date of Chen ’393—was not corroborated by non-inven-
tor testimony, documents, or other evidence. Notably, the
Board relied on the redacted version of the Inventor Decla-
ration and did not take into account inventor deposition
testimony of prior conception because the Board deemed
Kolcraft’s reliance on inventor deposition testimony to be
waived as it was raised for the first time at oral hearing.
The Board also determined that the patents-in-suit were
obvious in view of Chen ’393.
Kolcraft timely appealed to this court. We have juris-
diction pursuant to 28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
On appeal, Kolcraft does not contest that, if we agree
that Chen ’393 is prior art, then the ’970 and ’231 patents
are obvious. Kolcraft instead challenges whether the
Board erred in finding that Troutman and Bretschger did
not conceive of the inventions of the ’970 and ’231 patents
before the filing of Chen ’393 and that they did not exercise
reasonable diligence or reduce to practice the patented in-
ventions before January 7, 2004.
6 KOLCRAFT ENTERPRISES, INC. v. GRACO CHILDREN'S
PRODUCTS, INC.
This case turns on the corroboration of inventor testi-
mony. Only if there is sufficient corroboration do we ad-
dress whether Troutman and Bretschger conceived of the
patented inventions prior to January 7, 2004, the date
Chen ’393 was filed.
Inventor testimony of conception must be corroborated
by other, independent information. Apator Miitors ApS v.
Kamstrup A/S, 887 F.3d 1293, 1295 (Fed. Cir. 2018) (citing
Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1577 (Fed. Cir.
1996); Hahn v. Wong, 892 F.2d 1028, 1032–33 (Fed. Cir.
1989)). Whether there is sufficient corroboration is gov-
erned by a “rule of reason” analysis, which requires all per-
tinent evidence to be examined to determine whether the
inventor’s testimony is credible. In re NTP, Inc., 654 F.3d
1279, 1291 (Fed. Cir. 2011); Kridl v. McCormick, 105 F.3d
1446, 1450 (Fed. Cir. 1997).
Conception is “the formation, in the mind of the inven-
tor of a definite and permanent idea of the complete and
operative invention, as it is thereafter to be applied in prac-
tice.” REG Synthetic Fuels, LLC v. Neste Oil Oyj, 841 F.3d
954, 962 (Fed. Cir. 2016) (emphasis omitted) (quoting Cole-
man v. Dines, 754 F.2d 353, 359 (Fed. Cir. 1985)); see also
Hoop v. Hoop, 279 F.3d 1004, 1007 (Fed. Cir. 2002) (stating
that the standard for inventorship for design patents is the
same as that for utility patents). Conception is a question
of law premised on underlying factual findings. In re
VerHoef, 888 F.3d 1362, 1365 (Fed. Cir. 2018); Apator, 887
F.3d at 1295. Sufficient corroboration is one of those fac-
tual findings. REG Synthetic, 841 F.3d at 958. We review
the Board’s legal conclusions de novo and its factual find-
ings for substantial evidence. Apator, 887 F.3d at 1295.
Kolcraft relies on inventor deposition testimony, the
Inventor Declaration, and Exhibits A–H to show that the
inventors of the ’970 and ’231 patents conceived and dili-
gently reduced to practice the patented inventions before
January 7, 2004. All cited evidence of prior conception,
KOLCRAFT ENTERPRISES, INC. v. GRACO CHILDREN'S 7
PRODUCTS, INC.
however, originated with the inventors of the ’970 and ’231
patents. The Board, in considering only the redacted In-
ventor Declaration, found that Exhibits A–H and the In-
ventor Declaration “are undated and find identification, if
at all, only via the conclusory and uncorroborated testi-
mony of the inventors.” J.A. 40. There is no evidence in
the record independently corroborating the inventors’ al-
leged conception prior to Chen ’393. See Apator, 887 F.3d
at 1295 (stating that “evidence of corroboration must not
depend solely on the inventor himself” (quoting Cooper v.
Goldfarb, 154 F.3d 1321, 1330 (Fed. Cir. 1998))). There-
fore, substantial evidence supports the Board’s finding that
the Inventor Declaration and Exhibits A–H do not corrob-
orate dates of prior conception sufficient to antedate Chen
’393.
Kolcraft argues that the Board should have considered
both the unredacted Inventor Declaration and the inventor
deposition testimony of prior conception in its Final Writ-
ten Decision. That the Board did not consider the unre-
dacted Inventor Declaration or inventor deposition
testimony (even if not waived) is immaterial here because
both are supported solely by the inventors themselves.
In the same vein, specifics regarding Exhibits A–H are
supported solely by Troutman and Bretschger. The inven-
tors declare that the drawings and prototypes depicted in
Exhibits A–H were created on “a date prior to January 7,
2004.” J.A. 1182. But these dates are supported only by
inventor testimony. Therefore, Exhibits A–H fail to inde-
pendently corroborate any inventor testimony showing
prior conception. See Hahn, 892 F.2d at 1032–33 (“The in-
ventor, however, must provide independent corroborating
evidence in addition to his own statements and docu-
ments.”); Kridl, 105 F.3d at 1450 (stating that corrobora-
tion is “independent confirmation of the inventor’s
testimony”).
8 KOLCRAFT ENTERPRISES, INC. v. GRACO CHILDREN'S
PRODUCTS, INC.
Kolcraft contends that Exhibits A–H do not need to be
corroborated by non-inventor testimony or independent ev-
idence because they are “physical exhibit[s]” that are self-
explanatory. Appellant Br. 28–29. Indeed, the court is ca-
pable of comparing the photos and sketches of the various
play yards illustrated in Exhibits A–H with the claimed in-
vention, but the fact remains that these exhibits are un-
dated and lack any showing of authorship. The evidence
as to the dates of creation of these Exhibits is found only in
the Inventor Declaration and not in the Exhibits them-
selves.
Kolcraft also argues that the metadata associated with
the Exhibits shows the dates when they were created. Yet
the metadata is not part of the record. The only other dis-
cussion of metadata as possible corroborating evidence is
found in the deposition testimony of inventor Troutman,
which is insufficient to corroborate inventor testimony of
prior conception. See Chen v. Bouchard, 347 F.3d 1299,
1310 (Fed. Cir. 2003) (“Evidence of the inventive facts must
not rest alone on the testimony of the inventor himself.”);
see also Brown v. Barbacid, 276 F.3d 1327, 1335 (Fed. Cir.
2002) (stating that “the physical evidence in this case may
not single-handedly corroborate” inventor testimony).
We addressed the question of inventor corroboration in
Apator, 887 F.3d at 1293. There, we concluded that inven-
tor testimony of prior conception was not sufficiently cor-
roborated because all supporting evidence depended solely
on the inventor. Id. at 1295–96. The inventor provided a
declaration in which he stated that he conceived of his in-
vention before the effective filing date of the prior art. Id.
at 1294. To corroborate the inventor testimony, patent
owner Apator Miitors ApS (“Apator”) also proffered three
unwitnessed emails from the inventor to third parties
dated before the effective filing date of the prior art and
various drawings of the claimed invention with file naming
conventions indicating dates of creation before the filing
date of the prior art. Id. at 1294–95. The emails
KOLCRAFT ENTERPRISES, INC. v. GRACO CHILDREN'S 9
PRODUCTS, INC.
purportedly contained attachments showing prior concep-
tion, but there was no indication from the email headers
that a file was attached. Id. at 1296–97. Nor did the bodies
of the emails indicate the content of the attachments. Id.
at 1296. For each of the emails and drawings, the only rec-
ord evidence explaining the content of the attachments and
the date of the drawings came from the Inventor Declara-
tion. Id. at 1296–97. Without the Inventor Declaration,
the court could not independently discern whether a file
was attached to the emails, the content of any attachments,
or the date the drawings were created. Id. As a result, we
held that Apator failed to provide evidence corroborating
inventor testimony of prior conception. Id. at 1297.
Here, the purportedly corroborating evidence is even
weaker than the evidence presented in Apator. The record
contains only the Inventor Declaration, inventor deposition
testimony, and undated photos attached to the Inventor
Declaration. Only the Inventor Declaration, i.e., inventor
testimony, supports the purported dates showing concep-
tion prior to January 7, 2004. Inventor testimony alone
cannot prove conception. NFC Tech., LLC v. Matal, 871
F.3d 1367, 1372 (Fed. Cir. 2017); Price v. Symsek, 988 F.2d
1187, 1194 (Fed. Cir. 1993). Considering all the evidence
in the record, a reasonable mind could conclude that
Kolcraft failed to independently corroborate inventor testi-
mony of prior conception. Accordingly, we hold that sub-
stantial evidence supports the Board’s finding that
Kolcraft has not established conception prior to the effec-
tive filing date of Chen ’393. Because prior conception has
not been established, we need not address the issue of dili-
gence. See Apator, 887 F.3d at 1297.
CONCLUSION
We have considered Kolcraft’s remaining arguments
and find them unpersuasive and immaterial to the ques-
tion of corroboration. We hold that substantial evidence
supports the Board’s finding that Kolcraft failed to
10 KOLCRAFT ENTERPRISES, INC. v. GRACO CHILDREN'S
PRODUCTS, INC.
corroborate inventor testimony of prior conception. Accord-
ingly, we affirm the Board’s determination that the ’970
and ’231 patents are unpatentable as obvious in view of
Chen ’393.
AFFIRMED
COSTS
No costs.