Holding

In Dionex Softron GmbH v. Agilent Technologies, Inc., Nos. 21-1794 and 21-2372, the Court of Appeals for the Federal Circuit ("the Federal Circuit") affirmed interference decisions awarding priority to Agilent. Dionex Softron GmbH v. Agilent Technologies, Inc., No. 21-2372 (Fed. Cir. Jan. 6, 2023) ("Dionex I") is an appeal of the Patent Trial and Appeal Board ("the Board")'s decision in Interference ("Int.") No. 106,109. Dionex Softron GmbH v. Agilent Technologies, Inc., No. 21-1794 (Fed. Cir. Jan. 6, 2023) ("Dionex II") is an appeal of the Board's decision in Int. No. 106,087.

Background

At issue in Int. No. 106,109 were Agilent's U.S. Pat. App. No. 15/965,402 ("the '402 application") and Dionex's U.S. Pat. App. No. 16/016,866 ("the '866 application"). Initially Agilent filed the '402 application substantially copying Dionex's U.S. Patent Application No. 15/596,738, which eventually became Dionex's U.S. Patent No. 10,031,112 ("'112 patent"). After failing to trigger an interference, Agilent amended its '402 application claims. Subsequently, Dionix's '866 application copied Agilent's '402 amended application claims verbatim. Id. At *2. The Board then declared an interference.

Board

The Board designated Dionex as the senior party based on its earlier filing date and defined a single count as claim 1 of Agilent's '402 application. The count read:

A method of operating a liquid chromatography system, the liquid chromatography system comprising a liquid chromatography column and an injection valve, the method comprising:

isolating a sample loop of the liquid chromatography system from a high-pressure fluidic path in fluid communication with the liquid chromatography column, wherein the high-pressure fluidic path is at a pump pressure, wherein the sample loop is in fluid communication with the injection valve and the sample loop comprises a metering device for loading a sample on the sample loop, and isolating the sample loop comprises placing the injection valve in a PRESSURE COMPENSATION position, wherein a volume of the metering device is defined by a chamber in which a piston is reciprocatingly mounted;

determining a movement amount of the piston within the chamber from a first position to a second position to increase a pressure in the sample loop from an essentially atmospheric pressure to the pump pressure, based on the pump pressure; and

while the sample loop is isolated from the high-pressure fluidic path, decreasing the volume of the metering device to increase the pressure in the sample loop from the essentially atmospheric pressure to essentially correspond to the pump pressure of the high-pressure fluidic path;

wherein decreasing the volume includes forwarding the piston within the chamber by the determined movement amount from the first position to the second position;

wherein the metering device and the sample loop are in fluid communication in each position of the injection valve.

Id. At *2-3 (emphasis in original).

Dionex argued that the "determining a movement amount" limitation in Agilent's '402 application lacked written description support because "determining a movement amount" had to occur prior to "forwarding the piston," and this order was not adequately supported in the relevant specification. Id. at *4.

In interferences, when assessing written description support for a claim that has been copied from another to provoke the interference, the copied claims must be construed in light of the patent specification from which the claims were copied, i.e., the originating specification. Agilent Techs., Inc. v. Affymetrix, Inc., 567 F.3d 1366, 1375 (Fed. Cir. 2009).

"Dionex contended that the relevant specification from which to measure the adequacy of the written description support was generally its '112 patent, but . 'determining,' had to be construed in light of Agilent's '402 application." Id. The "determining a movement amount" step does not originate from Dionex's '112 patent; it appears only in Agilent's '402 application. In Dionex's '112 patent, the language reads "calculating a distance for a movement" rather than "determining a movement amount". Agilent countered that the limitation had to be viewed solely in light of its own '402 application specification. Id.

The Board found that Agilent's '402 application specification controlled, and found the limitation adequately supported. Id. The Board also rejected Dionex's narrower proposed claim construction requiring an order of steps. Id. at *4. As construed, therefore, under the broadest reasonable interpretation, the limitation at issue was supported by the description in Agilent's '402 application specification paragraphs 81-84. Id.

The Board granted Agilent's motion for judgment on the basis of priority; Agilent proved conception as of May 1, 2007, and actual reduction to practice as of June 1, 2007. Dionex's earliest alleged conception date was Dec. 4, 2007. Id. In doing so, the Board applied the rule of reason test and found that one of the co-inventor's testimony was sufficiently corroborated by co-worker testimony. Id. at *5. The Board denied Dionex's requests to draw negative inferences from the lack of testimony from the other co-inventor and the lack of contemporary documentary evidence. Id.

Federal Circuit

The Federal Circuit agreed with the Board's approach of using Agilent's '402 application specification for its claim construction analysis and evaluating the sufficiency of written description support for the claims. Id. at *7. Since it was Dionex's copying of Agilent's claims that triggered the interference, the Court reasoned, Agilent's '402 application is the originating disclosure and the appropriate document to use. Id. at *8.1

The Federal Circuit also agreed with the Board's claim construction. Nothing in the claim language indicated that the steps occur in a particular order. Nor did logic or grammar compel such a conclusion. According to the broadest reasonable interpretation, there was no restriction on when the "determining" step could occur. Id. at *9. Since the lack of written description argument relied upon the narrower claim construction requiring an order of steps, the written description argument also failed. Id.

Finally, the Federal Circuit held that the Board's findings regarding priority were supported by substantial evidence and affirmed the award of priority to Agilent. Id. The Federal Circuit noted that the rule of reason approach is "flexible" and Dionex's attacks on Agilent's expert testimony as lacking detail were unpersuasive ("Bäuerle may not have known every detail, but such omniscience is unnecessary under the rule of reason." Id. at *12.). Further, the Board's refusal to draw negative inferences from the lack of co-inventor testimony and documentary evidence was within the Board's discretion. "There 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." Id. at *13. "There is similarly no mandate that the Board draw a negative inference whenever a party fails to present some types of documentary evidence an opposing party insists must exist." Id. at *14.

With respect to Dionex II and Int. No. 106,087, the Federal Circuit "incorporate[s] by reference our opinion in Dionex I and, for the same reasons stated therein, we affirm the Board's award of priority to Agilent's patent application in this case." Dionex II at *2.

Take-Aways

These two related interference cases are an example of one benefit of the pre-AIA priority-based system over the current first-to-file system: a later-to-file junior party can prevail over the first-to-file by showing prior invention. This case highlights the importance of having the finder of fact conclude that your witnesses are credible, and their testimony supported by sufficient documentation. Given the late date on the invention document and generalized testimony of the corroborating witness regarding earlier activities, establishing the credibility of the inventor's story at the Board was important to the outcome on appeal, where the priority determination was reviewed for "substantial evidence." Applying the "flexible" rule of reason test, the Federal Circuit was satisfied that the Board's decision was sufficiently supported by substantial evidence.

On a claim drafting note, claimed steps do not necessarily need to be done in a specific order, unless the claim language (or specification) requires it. See also, Amgen, Inc. v. Sandoz, Inc., 923 F.3d 1023 (Fed. Cir. 2019) where the court held that "the claim language logically requires that the process steps, lettered (a) through (g), be performed in sequence." In Amgen, the accused process only involved one step and one solution and was found non-infringing. Id. at 1029. Consider making it clear rather than leaving it up for interpretation. If the steps of a method claim must occur in a certain order, draft the claim accordingly.

Footnote

1. "Here, it was Dionex's copying of Agilent's claims that provoked the interference. That renders the Agilent application the originating disclosure. Therefore, we evaluate the patent claims based on the Agilent specification. See Agilent Techs., 567 F.3d at 1375; see also In re Spina, 975 F.2d 854, 858 (Fed. Cir. 1992) ("A claim is not interpreted one way in light of the specification in which it originally was granted, and another way in light of the specification into which it is copied as a proposed interference count."). Although we have not had occasion to apply this rule in circumstances in which there was a prior unsuccessful effort between the same parties to provoke an interference, we neither see nor have been provided any persuasive reason not to apply our rule in this context." Id. at *8.

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