For an invention conceived outside the United States, the date of conception for purposes of priority for a United States patent is the date the invention is first reported to the inventor’s agent within the United States, which may occur orally or in writing. However, this case begs the question of whether overlapping dates of conception would be sufficient to show prior invention under the lessened, preponderance of the evidence standard during prosecution.
Background / Facts: The invention relates to smaller and “more reliable” integrated circuit packages. The claimed packages are “near chip-scale” packages, meaning that the finished package is only marginally larger than the semiconductor chip itself, which is achieved by encapsulating only a top portion of the package. The dispute on appeal relates to whether an allegedly anticipatory invention qualifies as prior art under § 102(g)(2) as having been previously “made in this country by another inventor.”
Issue(s): Whether for “conception” under § 102(g)(2) testimony that merely places acts within a stated time period can establish a date for inventor activities earlier than the last day of that time period.
Holding(s): No. To invalidate a patent under § 102(g)(2), the plaintiff bears the burden of persuasion by clear and convincing evidence that the prior art invention was conceived in the United States before the claimed invention at issue. Here, the plaintiff could only show a range of dates of possible United States disclosure, the first 30 days of which predated the claimed invention’s possible conception date, and the last 31 days of which overlapped with the claimed invention’s possible conception dates. Such a showing, at best, establishes that the other inventor might have conceived of the invention first. Evidence establishing that there might have been a prior conception is not sufficient to meet the clear and convincing burden needed to invalidate a patent.