Inventor’s Testimony Regarding Actual Reduction to Practice Was Sufficiently Corroborated

| Bryant ChenJustin J. Gillett


Before: Reyna, Chen, and Stark. Appeal from the Patent Trial and Appeal Board.

Summary: The PTAB did not err in considering evidence corroborating actual reduction to practice when determining priority in an interference proceeding.

Dionex provoked an interference proceeding by copying claims from an Agilent patent application into Dionex’s own patent application. In the proceeding, Dionex moved for judgment that Agilent’s claims were invalid for lack of written description support. The PTAB adopted Agilent’s specification as the “originating specification” that controlled the inquiry, construed disputed claim terms, and found adequate written description support for the claims in Agilent’s specification. Agilent later moved for judgment that it was entitled to priority. The PTAB granted Agilent’s motion, finding that Agilent proved conception and reduction to practice before Dionex’s earliest conception date. Dionex appealed.

Regarding written description, the Federal Circuit found that the PTAB properly treated Agilent’s specification as the “originating specification” because Agilent’s claims were copied to provoke the interference. The Federal Circuit found no error in the PTAB’s claim construction and conclusion that Agilent’s specification provided adequate written description support for the claims.

Regarding priority, the Federal Circuit found no error in the PTAB’s finding for Agilent. The Court examined a document, expert testimony, and lay testimony on which the PTAB relied to corroborate Agilent’s inventor testimony regarding reduction to practice. While the cited document was last modified after the purported reduction to practice, the Federal Circuit noted non-inventor testimony stating that the document depicted the limitations of the claim by the pertinent date. According to the Federal Circuit, the expert opined that the document disclosed a configuration that was designed to achieve the claimed result. The Court noted that two lay witnesses both observed a successful working prototype during the relevant time. The Federal Circuit concluded that, taken as a whole, there was substantial evidence to corroborate that Agilent’s actual reduction to practice occurred before Dionex’s earliest conception date. Accordingly, the Federal Circuit affirmed the judgment of the PTAB.

Editor: Paul Stewart