Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in Dionex Softron GmbH v. Agilent Technologies, Inc., No. 21-2372 (January 6, 2023), affirming the Patent Trial and Appeal Board’s decision in an interference proceeding decided under pre-AIA law.
Competitors Dionex and Agilent filed competing applications claiming rights to the same invention for a method of operating a liquid chromatography system. Agilent unsuccessfully tried to provoke an interference by copying the claims in Dionex’s first-filed application. Agilent then amended its claims, which Dionex subsequently copied in a new application. This time, an interference ensued. Although the Board identified Dionex as the senior party, it treated Agilent’s specification as the “originating specification” for construing claims and evaluating written description support. It rejected Dionex’s invalidity argument that the limitation, “determining a movement amount of the piston,” had to occur prior to the limitation, “forwarding the piston within the chamber by the determined amount,” but that there was inadequate written description support for this order of operations. The Board also found that Agilent proved both conception and reduction to practice six months before Dionex’s earliest alleged conception date in December 2007. It entered judgment for Agilent and refused Dionex’s claims. Dionex appealed.
The Federal Circuit affirmed. First, it held the Board correctly viewed Agilent’s specification as the “originating specification” because Dionex’s copying of Agilent’s claims had provoked the interference – even though Agilent had previously but unsuccessfully attempted to provoke an interference. Second, it found no error in the Board’s claim construction. Under the broadest reasonable construction, neither logic nor grammar dictated a particular order of steps for the limitations. “‘[D]etermining’ could occur during the forwarding of the piston, much like a fuel pump determines the amount of fuel necessary to fill a vehicle’s fuel tank during filling ….” Slip op. at 9. Third, it found no error in the Board’s finding of adequate written description support. Fourth, it found no error in the Board’s awarding priority to Agilent, because substantial evidence supported the finding that Agilent had reduced the invention to practice before Dionex’s earliest conception date. Further, the Court held the Board did not abuse its discretion in refusing to draw a negative inference from the co-inventor’s failure to testify or from missing documents.