Fed Circuit Watch: Swearing Behind Must be Supported by Sufficient Evidence

102 fed circuit watch patent pre-AIA swearing behind

On April 17, 2018, the Court of Appeals for the Federal Circuit held in Apator Miitors ApS v. Kamstrup A/S,[1] that in order for a patent assignee to swear behind a reference by antedating its own conception, it must do so by more than just merely providing the inventor’s statement of conception.

The facts are as follows.

Apator Miitor owns U.S. Patent No. 8,893,559 (‘559).  Kamstrup filed a petition for inter partes review of the ‘559 patent in 2015.  Upon institution, Kamstrup argued that claim 2 of the ‘559 patent was anticipated under 35 U.S.C. §102(g) by U.S. Patent Application Publication No. 2012-0006127 to Nielsen (“Nielsen”), and claim 10 was obvious over Nielsen and European Patent Application No. 1798528 to Körner (“Körner”).  The ‘559 patent has an effective filing date of April 12, 2010, while Nielsen’s effective filing date (EFD) was March 25, 2010.  Apator attempted to swear behind the reference.  “Swearing behind” a reference was a prosecution tactic under the pre-AIA §102 (MPEP 2138) where the applicant would file a §131 declaration (MPEP 715) to swear conception before the prior art reference.  If done properly, “swearing behind” would have removed the prior art reference and thereby not have the claims anticipated under §102.  Apator’s §131 declaration of the inventor, Jens Drachmann, declared that he conceived the invention prior to Nielsen’s EFD.  Attached were emails dated February 15, 2010 and March 22, 2010, with drawings as proffered supporting evidence.  The PTAB rejected the swearing behind §131 declaration and evidence.

The panel was composed of Judges Moore, Linn, and Chen, with Judge Moore writing for the court.  “An inventor can swear behind a reference by proving his invention before the EFD of the reference and was diligent in reducing his invention to practice after the date.”[2]  (Diligence and reduction to practice were not discussed in the opinion as there was no proper swearing behind.)  In addition to the inventor’s own statements and documents, proffered evidence must be introduced.

Judge Moore questioned the Drachmann emails.  The emails referenced two other presumably Apator employees to whom Drachmann had sent his emails alleging conception.  Judge Moore was struck by the conundrum the emails presented:

The evidence proffered by Mr. Drachmann is stuck in a Catch-22 of corroboration: Apator attempts to corroborate Mr. Drachmann’s testimony with the emails and the drawings, but the emails and drawings can only provide that corroboration with help from Mr. Drachmann’s testimony.[3]

Further, she seemed incredulous that this alone was enough to show conception of the invention:

The first Tunheim email states that “a sample is attached,” but we my rely on Mr. Drachmann’s testimony to learn that the first Tunheim email has an attachment . . . The second Tunheim and Bjerngaard emails suffer from the same problem: while the emails reference a “presentation,” it is only by resort to Mr. Drachmann’s testimony that we can know either email has an attachment. [W]ithout Mr. Drachmann’s testimony otherwise, we cannot know that the drawings were created any earlier than the January 30, 2012 date indicated.[4]

As such, the panel found that Apator had not established conception prior to Nielsen, and therefore, could not swear behind Nielsen.  The PTAB was affirmed as to anticipation of claim 2 by Nielsen and obviousness of claim 10 over Nielsen and Körner.


[1] ___F.3d___ (Fed. Cir. 2018), aff’g Case No. IPR2015-01403 (PTAB 2016).

[2] See Perfect Surgical Techniques, Inc. v. Olympus Am., Inc., 841 F.3d 1004, 1007 (Fed. Cir. 2016).

[3] See Apator, supra (slip op. at 6).

[4] Id.