Addressing the issue of whether the patent owner had provided
sufficient evidence of prior conception to establish inurement by
third-party activity, the US Court of Appeals for the Federal
Circuit reversed and remanded a Patent Trial and Appeal Board (PTAB
or Board) decision, instructing the PTAB to determine whether the
patent owner presented sufficient evidence that a prototype
embodied all of the claim limitations. NFC Tech., LLC v. Joseph
Matal, Case No. 16-1808 (Fed. Cir., Sept. 20, 2017) (Lourie,
J).
NFC owns a patent related to near-field communication devices.
HTC requested inter partes review of the patent, and the
PTAB instituted review. During the proceeding, NFC presented
evidence of a prototype to antedate the prior art relied upon by
HTC. The PTAB found that there was insufficient corroboration to
establish that the inventor conceived the claimed invention before
ordering the prototype from a third party, or that the third party
created the prototype
