Dionex Softron GmbH v. Agilent Techs., Inc., Appeal No. 21-2372 (Fed. Cir. Jan. 6, 2023)
This week’s Case of the Week, the only precedential patent opinion issued by the Federal Circuit this week, focused primarily on the corroboration requirement for relevant dates of invention. The Court held there was sufficient evidence of a reduction to practice as of a given date, based primarily on corroboration of multiple witnesses, notwithstanding limited documentary evidence.
The case concerns an interference proceeding regarding two patent applications that were applied for prior to enactment of the America Invents Act, which occurred in 2011. Agilent attempted to provoke an interference by copying claims from Dionex’s patent application. When that failed, Agilent amended its claims, and Dionex copied those claims. An interference was instituted for the board to determine priority. The Board ultimately found that Agilent proved a final reduction to practice prior to Dionex’s date of conception, and awarded priority to Agilent.
Specifically, the Board credited the testimony of one of the two co-inventors, which was corroborated by two of his coworkers who had worked near him during the relevant time period. Those two witnesses testified that the co-inventor had successfully tested a prototype by June 2007. Although a document that was admitted into evidence had a creation date a year earlier and a last modified date of November 2008, the Board credited testimony that the document had existed and shown the prototype’s configuration during the relevant pre-June-2007 timeframe. The Board also rejected a suggestion to draw a negative inference from the lack of testimony of the other co-inventor, and the lack of contemporaneous documentary evidence.
Emphasizing that corroboration is tested by a “rule of reason,” the Federal Circuit affirmed. The Court held that the Board’s finding of sufficient corroboration was supported by substantial evidence. Dionex challenged various aspects of the inventor testimony, suggesting that they raised substantial questions about the corroboration. The Court held that “[u]nder the flexible rule of reason approach, there was nothing inappropriate about the Board accepting” the testimony and that although the inventor “may not have known every detail,  omniscience is unnecessary under the rule of reason.” Dionex’s efforts to challenge other aspects of the corroborating evidence were also rebuffed.
The Court also rejected Dionex’s argument that the Board should have drawn a negative inference due to the lack of co-inventor testimony and lack of certain documentary evidence. The decision whether to draw a negative inference was in the discretion of the Board, and it did not abuse its discretion.
The Court affirmed the award of priority to Agilent.
The opinion can be found here.
By Nika Aldrich
This article summarizes aspects of the law and does not constitute legal advice. For legal advice for your situation, you should contact an attorney.
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