56 F.4th 1353
Fed. Cir.2023Background
- Dionex and Agilent engaged in claim-copying that culminated in an interference between Agilent’s U.S. App. No. 15/965,402 and Dionex’s U.S. App. No. 16/016,866; Dionex was designated senior, Agilent junior.
- The interference count was claim 1 of Agilent’s application, which included a limitation reciting “determining a movement amount of the piston…to increase a pressure in the sample loop…based on the pump pressure” and then “forwarding the piston…by the determined movement amount.”
- Dionex challenged written-description sufficiency, arguing “determining” must occur before “forwarding” and Agilent’s specification did not support that ordering; Agilent argued its own specification governed and permitted real-time determination during piston movement.
- The Board treated Agilent’s specification as the originating disclosure, adopted a construction allowing determination during forwarding, found adequate written description, and concluded Agilent had reduced to practice by June 1, 2007.
- The Board credited corroborating testimony (Kretz, Berndt, Bäuerle) and Exhibit 2152 to support reduction to practice and declined to draw negative inferences from the absence of a co-inventor’s testimony or certain documentary evidence.
- The Board awarded priority to Agilent; the Federal Circuit affirmed, rejecting Dionex’s challenges to specification choice, claim construction, written description, corroboration, and adverse-inference arguments.
Issues
| Issue | Plaintiff's Argument (Dionex) | Defendant's Argument (Agilent) | Held |
|---|---|---|---|
| Which specification controls claim construction and written-description review when claims are copied? | The copied claim should be construed in light of Dionex’s (or both) specification. | The originating disclosure is Agilent’s application because Dionex copied Agilent’s claims to provoke the interference. | Agilent’s specification is the originating disclosure; Board correctly applied it. |
| Whether “determining a movement amount” must occur before “forwarding the piston” (order of steps). | The claim’s logic/grammar requires determining first; otherwise the phrase is superfluous. | Under broadest reasonable construction, "determining" may occur during forwarding (real-time empirical determination). | Board correctly construed the claim to permit determination during forwarding; no superfluity. |
| Whether Agilent’s specification provides adequate written-description support for the determining limitation. | Under Dionex’s ordered-steps construction, Agilent’s spec lacks written-description support for pre-forwarding determination. | The spec supports the Board’s construction permitting real-time determination; paragraphs cited provide adequate support. | Because the Court upheld the Board’s construction, substantial evidence supports the Board’s finding of adequate written description. |
| Whether Agilent proved priority via corroborated actual reduction to practice and whether negative inferences should have been drawn. | Corroboration fails (witnesses not truly independent; Exhibit 2152 modified later); Board should infer absent co-inventor testimony/documents would be adverse. | Witness testimony and Exhibit 2152 (as it existed at time) provide sufficient corroboration under the rule of reason; no mandatory adverse inference from missing testimony/docs. | Substantial evidence supports corroboration and reduction to practice before Dionex’s earliest conception; Board properly declined to draw negative inferences. |
Key Cases Cited
- Teva Pharms. USA, Inc. v. Sandoz, Inc., 574 U.S. 318 (clarifying de novo review of claim construction with subsidiary fact findings reviewed for substantial evidence)
- Agilent Techs., Inc. v. Affymetrix, Inc., 567 F.3d 1366 (origination-disclosure rule: copied claims are construed in light of originating specification)
- ULF Bamberg v. Dalvey, 815 F.3d 793 (written-description review as factual determination for substantial-evidence review)
- Mformation Techs., Inc. v. Research in Motion Ltd., 764 F.3d 1392 (when claim-step order is required by logic or grammar)
- Cooper v. Goldfarb, 154 F.3d 1321 (requirements for actual reduction to practice and corroboration rule of reason)
- Borror v. Herz, 666 F.2d 569 (discussing discretionary nature of drawing negative inferences from failure to call witnesses)