Patent owner unable to establish an earlier conception date because it did not tie its corroborating evidence to the claims

Curt Manufacturing, LLC, v. Horizon Global Americas, Inc., IPR2019-00625 (Aug. 11, 2020).
Before: Saindon, Grossman, Meyers.

Curt Manufacturing filed a petition for inter partes review challenging multiple claims of a patent owned by Horizon Global Americas.  The primary issue in the proceeding was whether Horizon antedated a prior art reference based on evidence of prior conception, diligence, and reduction to practice. 

In particular, Horizon argued that (i) the inventors of the challenged patent reduced to practice their invention prior to the priority date of the prior art reference, or, alternatively, (ii) the inventors of the challenged patent conceived their inventions prior to the priority date and worked diligently to reduce their inventions to practice thereafter.  In support of these arguments, Horizon relied on (i) inventor testimony from all four named inventors and (ii) expert testimony. 

Regarding the inventor testimony, the PTAB found that the exhibits cited in the inventor declaration were not sufficient to independently corroborate an earlier conception or reduction to practice date because the exhibits either did not support the inventors’ statements, or they bore no relation to the claimed invention. 

Regarding the expert testimony, the PTAB found that the patent owner’s expert did not tie his conclusions regarding the inventor declarations and engineering documents to the elements of the challenged claims.  Thus, there was no probative evidence, either through testimony or documents, corroborating an earlier date of conception or reduction to practice. 

Regarding diligence, the PTAB noted that brief references to other work by the inventors did not show diligence in reducing the claimed invention to practice up until the application filing date.

For these reasons, the PTAB determined that the evidence did not support an earlier invention date prior to the filing dates of the asserted prior art. 

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