PTAB Applies Stringent Standards for Conception and Reduction-to-Practice Standards

In Garmin v. Cuozzo, the first IPR final decision, the PTAB rejected the patent owner’s corroborating documents, declaration, and deposition testimony introduced to prove that he was first to invent the claimed speed limit indicator technology.

Under pre-AIA law, inventors can disqualify prior art references by proving an earlier date of invention. To antedate a reference, an inventor must demonstrate 1) a moment of “conception” and 2) reasonable diligence towards reducing the invention to practice. In disapproving Cuozzo’s attempt to antedate two prior art patents, the Board applied a strict “independent corroboration” standard, pointing to insufficiently explained gaps in the inventor’s patenting efforts as demonstrating no “continuous exercise of reasonable diligence.”

The Board first considered the inventor’s declaration, which stated that he first conceived the invention while receiving a speeding ticket. Mr. Cuozzo produced his driving record showing the police cited him for speeding that day. The Board rejected the argument because the driving record “corroborates only that the inventor received a speeding ticket [. . .], not anything that [Mr.] Cuozzo conceived on that day.”

The Board also considered an invention disclosure Mr. Cuozzo sent prior to the critical date and signed by an otherwise unidentified witness. The Board emphasized that the handwritten date of the document alone was unreliable, but that if the signature had been authenticated by testimony “it would serve as effective corroboration.” Absent this or evidence that the document was maintained as a routine business record, the Board rejected it as proof of prior conception.

Turning to diligence, the Board found “there must be continuous exercise of reasonable diligence” for the “entire critical period.” Mr. Cuozzo testified that he received a preliminary patentability report in “January 2001,” analyzed it, and return-corresponded on March 2. Characterizing “January 2001” as vague and noting “Cuozzo would benefit with a later date of receipt of the preliminary report,” the Board assigned “the earliest day in January,” as the receipt date. The Board thus found that from January 1 to March 2 the inventor was not reasonably diligent.

The Board likewise found inexcusable the five-month period the inventor claimed he spent raising money for his application fee. Although efforts to obtain funds to prepare and file the application could indicate diligence, the Board wrote, Mr. Cuozzo’s declaration and deposition testimony failed to establish reasonable diligence over the entire five months.