Processing All Things Federal Circuit
January 17, 2023 - Last Week in the Federal Circuit

Last Week In The Federal Circuit (January 3 – January 6): Corroboration Station

chroma color chemistry

A new year means new Federal Circuit decisions to analyze. Our case of the week recounts an interesting saga of companies copying each other’s patent applications to provoke an interference. And if that’s not enough to grab your attention, the case provides some insight into the kinds of evidence that litigants can use to corroborate inventor testimony.

Case of the week: Dionex Softron GmbH v. Agilent Technologies, Inc., No. 21-2372

Panel: Judges Reyna, Chen, and Stark, with Judge Stark writing the opinion

You should read this case if: you have a matter involving corroboration of inventor testimony

This week’s case involves what the Federal Circuit deemed “an unusual history.” Agilent and Dionex both sought to patent liquid chromatography systems. Agilent copied the claims in Dionex’s patent application in an unsuccessful bid to provoke an interference. Then Agilent amended its claims, Dionex copied those claims, and an interference was finally declared. (The America Invents Act, which was enacted more than a decade ago, eliminated interference proceedings. But certain patents claiming pre-AIA inventions may still be subject to interferences.) The Patent Trial and Appeal Board found that Agilent proved conception and actual reduction to practice before Dionex’s earliest alleged conception date. The Board thus awarded priority to Agilent and denied Dionex’s claims.

The Federal Circuit affirmed. The Court decided several issues, including claim construction and written description, but we’ll focus on its discussion of corroboration and reduction to practice.

As a reminder, actual reduction to practice occurs when the inventor creates an embodiment of the claimed invention (or interference count). An inventor’s testimony “must be corroborated by independent evidence.” In determining whether an inventor’s testimony has been adequately corroborated, each case “must be decided on its own facts.”

Here, the Board’s corroboration finding was based on (1) testimony from other Agilent employees who worked near the inventor and saw a successful prototype of the invention and (2) a document depicting that prototype.

The Federal Circuit rejected Dionex’s argument that the coworkers’ testimony was insufficient because they did not know the prototype’s specific configuration. The coworkers “may not have known every detail, but such omniscience is unnecessary under the rule of reason.” It sufficed that they “understood enough to know that the prototype performed all steps of the count.”

Nor was the Board required to discount the prototype document because it had a “last modified” date after Agilent’s purported reduction to practice. The document was created more than a year before the reduction-to-practice date, and the Board reasonably credited testimony that the document depicted a prototype meeting all the claim limitations by the relevant date.

The Court also concluded that the Board was not required to draw a negative inference against Agilent based on a lack of co-inventor testimony and the absence of other documentary evidence. According to the Court, “[t]here is no per se requirement to infer that the testimony of an inventor who fails to testify would be harmful to the position of his co-inventor.” The Board permissibly accepted Agilent’s explanation that testimony from the co-inventor (who was retired) would have been cumulative of and inferior to the inventor’s testimony.

Further, the Court explained that the Board need not “draw a negative interference whenever a party fails to present some types of documentary evidence an opposing party insists must exist.” The Board was not required to accept Dionex’s assertion that Agilent must have created additional documents under “industry norms.” Nor was the Board required to conclude that any such “missing” documents would undermine Agilent’s other evidence.


Precedential opinions: 3

Non-precedential opinions: 2

Rule 36: 0

Longest pending case from argument: Dionex Softron GmbH v. Agilent Technologies, Inc., Nos. 21-1794, 21-2372 (183 days) (companion cases)

Shortest (non-Rule 36) pending case from argument: Tippmann Engineering, LLC v. Innovative Refrigeration Systems, Inc., No. 22-1318 (60 days)