While somewhat of a moot point going forward in view of the first-to-file AIA transition, this case emphasizes the importance of keeping proper records of inventorship, including indications of what changes are made to a document and when.
Background / Facts: The patent here is fairly broad and abstract, generally relating to “a computer system for managing product knowledge related to products offered for sale by a selling entity.” The accused infringer was able to uncover a fairly similar prior art reference filed a couple months ahead of the patent in-suit. In attempting to antedate this new reference, the patentee pointed to an appendix concurrently filed with its original application that listed a creation date before the prior art date of the new reference. However, the appendix also listed a subsequent modification date after the prior art date of the new reference with no indication as to the extent of the modifications, and the inventor likewise was unable to recall any details about the modification or conception in general.
Issue(s): Whether the listed creation date in view of the subsequent modification date, without corroborating evidence as to the extent of the modifications, is sufficient to establish prior conception.
Holding(s): No. The court found that “although Appendix A included a creation date of June 10, 1996, nearly every page also included a modification date of December 11, 1996 – more than three months after the filing date of the [prior art] patent. Based on that modification date, a juror could only conclude with reasonable certainty that Appendix A was in its current form no later than December 11, 1996. Indeed, as admitted by [the patentee], ‘[t]here is no evidence of what changes, if any, were made between the creation date [of June 10, 1996] and the last edit date [of December 11, 1996].’ … In other words, no evidence precludes the possibility that [the patentee] created Appendix A with little or no text on June 10, 1996, and ‘modified’ it, by adding all or most of the text now present, some time on or before December 11, 1996. This does not provide sufficient evidence for a reasonable juror to find a conception date prior to the filing date of the [prior art] patent.”