Nfc Technology, LLC v. Matal, 871 F.3d 1367

Background

NFC Technology owned U.S. Patent No. 6,700,551 (the ’551 patent) directed to a near-field communication device; priority claimed to March 25, 1999 (French filing Mar. 25, 1999).
HTC filed an inter partes review asserting claims 1–3 and 5 were obvious over prior art including Sears (filed Feb. 8, 1999).
NFC defended by alleging inventor Bruno Charrat and his INSIDE Technologies team had reduced the invention to practice before Sears (evidence: June 1998 data sheet, Sept. 1998 PCB layouts from Concept Electronique (CE), a Sept. 10, 1998 fax cover sheet with Charrat’s approval, testing docs, wiring diagrams, and Charrat testimony).
The PTAB assumed the prototype embodied the claimed invention but found NFC failed to show CE’s fabrication inured to Charrat because Charrat’s conception was inadequately corroborated; the Board therefore denied antedating and held the claims obvious.
On appeal, NFC challenged the Board’s inurement/conception analysis; the Director intervened. The Federal Circuit reviewed corroboration and inurement de novo (with factual findings for substantial-evidence review).
The Federal Circuit reversed the Board on corroboration/inurement, finding the documentary record (data sheet signed “BC,” PCB layouts listing Inside Tech. as client/concept, the dated CE fax to B. Charrat with "OK FAB") cumulatively corroborated Charrat’s conception and that CE’s fabrication inured to him; remanded for the Board to decide whether the prototype actually embodied the claimed invention.

Issues

Issue	NFC's Argument	Director/HTC's Argument	Held
Whether the Board properly addressed inurement though parties did not expressly raise it	Board could and should consider inurement because CE fabricated the prototype for Charrat; NFC argued inurement was implicated	Director supported Board's treatment; HTC had argued fabrication did not inure to NFC	Court did not decide whether Board should have raised inurement sua sponte but proceeded to evaluate corroboration; reversed Board's factual conclusion on corroboration and inurement
Standard applied for proving prior conception/antedating (interference law vs. 37 C.F.R. §1.131)	NFC contended the Board used interference-priority standards inappropriately and should have applied the antedating regulatory standard	Director defended Board’s approach under cited precedents	Court limited review to corroboration and inurement error and did not resolve the broader standards question; left that issue for another day
Whether Charrat’s testimony of conception was sufficiently corroborated by documentary evidence	NFC argued the data sheet, PCB layouts, CE fax, and subsequent testing docs collectively corroborate conception under the rule-of-reason	Director/Board argued documents were insufficient, lacking author attribution, witness signatures, or clear communications to CE	Court held substantial evidence did not support Board’s discounting; documents collectively corroborated Charrat’s account and established conception
Whether CE’s fabrication inured to Charrat (so prototype can antedate Sears)	NFC argued CE fabricated at Charrat/INSIDE’s direction, so fabrication inured to him	Director/Board argued lack of direct communications showing CE followed Charrat’s claimed design meant no inurement	Court held fabrication inured to Charrat given corroborated conception and documentary record; remanded to decide if prototype embodied claimed invention

Key Cases Cited

Cooper v. Goldfarb, 240 F.3d 1378 (Fed. Cir.) (priority/inurement principles in interference contexts)
Genentech, Inc. v. Chiron Corp., 220 F.3d 1345 (Fed. Cir.) (third-party testing and inurement analysis)
Cooper v. Goldfarb, 154 F.3d 1321 (Fed. Cir.) (earlier Cooper decision on conception/corroboration)
Price v. Symsek, 988 F.2d 1187 (Fed. Cir.) (inventor testimony requires corroboration)
Singh v. Brake, 317 F.3d 1334 (Fed. Cir.) (rule-of-reason corroboration analysis)
Fleming v. Escort Inc., 774 F.3d 1371 (Fed. Cir.) (treating corroboration sufficiency as factual issue)
Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368 (Fed. Cir.) (absence of documentary trail relevant in corroboration analysis)
Loral Fairchild Corp. v. Matsushita Electric, 266 F.3d 1358 (Fed. Cir.) (corroboration can be satisfied by contemporaneous documents and testimony despite passage of time)
In re Jolley, 308 F.3d 1317 (Fed. Cir.) (not every factual issue must be corroborated by independent documents)