As the dodo of patent practice, the number of interferences has been steadily dwindling since enactment of the Leahy-Smith America Invents Act in 2012 abolished the practice in favor of a "first inventor to file" regime and a derivation proceeding for instances where a patentee is found to have taken the invention from the true inventor (35 U.S.C. § 135).  And while the various CRISPR interferences between The Broad Institute and the University of California (Nos. 105,048 and 105,115) and those parties and ToolGen (Nos. 106,126 and 106,127) and Sigma-Aldrich (Nos. 106,132 and 106,133) have garnered more attention than other interferences combined, there remain a few other remaining interferences and in one of them, Dionex Softron GmbH v. Agilent Technologies, Inc., the Federal Circuit affirmed a determination by the Patent Trial and Appeal Board in favor of the Junior Party.

This interference was in an interesting procedural posture, wherein both parties copied each other's claims to provoke an interference.  Agilent made the first attempt and failed, copying claims to Dionex's U.S. Application No. 15/596,738, now U.S. Patent No. 10,031,112.  After Agilent amended its claims in U.S. Application No. 15/965,402, Dionex copied those claims in its U.S. Application No. 16/016,866, and the interference was declared.  The Count in Interference No. 106,109 was Claim 1 of Agilent's application:

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.

(wherein the italicized limitations were relevant to the issues before the Federal Circuit on appeal).

The PTAB denied Dionex's motion that Agilent's claims were not supported by an adequate written description under 35 U.S.C. § 112, first paragraph, finding that the specification whose adequacy was required was Agilent's '402 application because that was the application from which the claim was copied.  The issue, regarding the italicized limitation above was whether "determining a movement amount" needed to occur before "forwarding the piston" based on the disclosure of Dionex's '116 application (although Dionex conceded that certain terms, like "determining," should be construed under Agilent's '402 specification).  The Board held that Agilent's '402 specification provided an adequate written description under § 112, first paragraph, because using the "broadest reasonable interpretation" standard there was no basis for Dionex's asserted temporal limitation (i.e., that there was a movement determination prior to piston movement).  Under the Board's construction, there could be such a determination while the piston was moving and the limitation under this interpretation was adequately described by the '402 specification.

On the priority merits, the Board held for Agilent on corroborated evidence that its inventor had reduced the invention to practice (June 1, 2007) prior to Dionex's earliest asserted conception date (December 4, 2007).  The evidence was provided by testimony of one of two co-inventors, Kretz, corroborated by two co-workers, Berndt and Bäuerle.  Their corroborating testimony was that Kretz had successfully tested a prototype of the claimed invention by his asserted June 1, 2007 reduction to practice date.  This testimony was consistent with documentary evidence initially created on April 4, 2006 and having modifications as late as November 11, 2008, which document was attested by Agilent's expert to describe a functional apparatus falling within the interference Count.  The Board rejected Dionex's argument that the described apparatus did not have a pressure sensor needed to provide equalized pressure as recited in the Count, based on testimony by Bäuerle that the pump used in the prototype had an internal pressure sensor.  Finally, the Board refused to draw an adverse inference against Agilent from the failure of the second named inventor, Glatz, to testify or from the absence of contemporaneous technical drawings, schematics, and other documentary evidence in light of the adequacy of the testimony introduced by Agilent.  This appeal followed.

The Federal Circuit affirmed, in an opinion by Judge Stark joined by Judges Reyna and Chen.  Regarding the § 112, first paragraph, issue, the Federal Circuit agreed with the PTAB that the '402 application was the proper source of an adequate written description, as the "originating specification" under Agilent Techs., Inc v. Affymetrix, Inc., 567 F.3d 1366, 1374 (Fed. Cir. 2009); Rowe v. Dror, 112 F.3d 473 (Fed. Cir. 1997); and In re Spina, 975 F.2d 854 (Fed. Cir. 1992).  Agilent's earlier failure to provoke an interference by coping Dionex's claims did not change this result according to the panel.  The Federal Circuit also agreed with the PTAB's claim construction regarding whether there was a temporal component in the claim language, i.e., whether the "determining" activity must antecede "forwarding" of the piston.  While conceding the general rule that a method claim does not necessarily require steps to be performed in the order they are recited in the claim, the opinion notes that there are instances where "logic or grammar" requires a particular order, citing Mformation Techs, Inc v. Rsch. in Motion, Ltd., 764 F3d 1392 (Fed. Cir. 2014).  This was not such a case, the panel concluded, and thus the Board's determination was supported by substantial evidence (including expert testimony) as a question of fact.

The Federal Circuit also affirmed the Board's priority determination, based on actual reduction to practice having been achieved prior to Dionex's conception date and being supported by sufficient corroborating evidence.  The panel affirmed the Board's application of the "rule of reason" regarding corroborating testimony under Cooper v. Goldfarb, 154 F.3d 1321 (Fed. Cir. 1998), where there is "sufficient circumstantial evidence of an independent nature" to support inventor Kretz's testimony concerning his actual reduction to practice.  The opinion characterizes Dionex's arguments on these issues to be "mistaken" insofar as the Board properly credited testimony of contemporary witnesses of inventor Kretz's work and actual reduction-to-practice of an apparatus within the scope of the interference Count.  While the witnesses, particularly Bäuerle, may not have known every detail of the apparatus the Court held that "omniscience is unnecessary under the rule of reason" in Cooper and that any inadequacy in witness Berndt's understanding that was the basis of his testimony was not disqualifying because it was independent of inventor Kretz's testimony and the Board could find "some collaborative value" in it.  Regarding the exhibit, the panel rejected Dionex's challenge, saying it was "without merit" because the Board relied on the exhibit "as it existed at the relevant date" (emphasis in opinion), as corroborated by witness Bäuerle.  Finally, the Court rejected Dionex's argument that the Board should have drawn an adverse inference from second inventor Glatz's failure to provide testimony, saying there is no per se requirement to infer that an inventor's failure to testify should be considered harmful to her co-inventor, citing Borror v. Herz, 666 F.2d 574 (C.C.PA. 1981), and that the Board had discretion that it had not abused on this record regarding inventor Glatz's failure to testify.  In the absence of such a mandate that the Board draw the adverse inference, the Court held there was no error by the Board in not doing so and thus affirmed the Board's priority determination in favor of Agilent.

Dionex Softron GmbH v. Agilent Technologies, Inc. (Fed. Cir. 2023)
Panel: Circuit Judges Reyna, Chen, and Stark
Opinion by Circuit Judge Stark