Thomson S. A. v. Quixote Corp.

United States Court of Appeals for the Federal Circuit (Fed. Cir). January 25, 1999

BACKGROUND
While your patent application is pending before the United States Patent and Trademark Office (USPTO), the Examiner sends you notice that your patent application has entered into an interference proceeding. Your patent practitioner urges you to provide evidence relating to the date when the claimed invention was conceived of, reduced to practice and showing diligence between those dates. Your patent practitioner notes that it is important to have this evidence corroborated, preferably by a non-inventor. After reviewing a large stack of laboratory notebooks, you note that many of the key pages are not signed, dated or witnessed.

EXECUTIVE SUMMARY
In this case relating to the validity of patents directed to optical information storage devices such
as CD's, the District Court and the Fed. Cir. were faced with determining whether testimony of
inventors not a party to, or having an interest in, an action for infringement requires corroboration under 35 U.S.C. 102(g). At issue was testimony by non-party inventors as to non-patented inventive activity under 35 U.S.C. 102(g). The Fed. Cir. held that corroboration is required only when the testifying inventor is asserting a claim of derivation or priority of his or her invention and is a named party, an employee of or assignor to a named party, or otherwise is in a position where he or she stand to directly and substantially gain by his or her invention being found to have priority over the patent claims at issue.

The Practice Pointer to be gained from this case is that it is very beneficial to have corroboration of evidence of the conception, diligence and reduction to practice a routine part of an organization's procedures.

THE LAW
35 U.S.C. 102(g) provides that a person shall be entitled to a patent unless:

(g) before the applicant's invention thereof the invention was made in this country by another who had not abandoned, suppressed, or concealed it. In determining priority of invention there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.

The totality of the evidence is considered to determine whether the requirements of 35 U.S.C.
102(g) are satisfied by the clear and convincing standard. See Price v. Symsek, 26 USPQ2d 1031 (Fed. Cir. 1993).

The Fed. Cir. has often held that in interference and infringement lawsuits that an inventor's testimony alone respecting the facts surrounding a claim of derivation or priority of invention cannot satisfy the clear and convincing standard without corroboration due to the skepticism of uncorroborated inventor testimony when the inventor has an interest in the outcome. See Cooper v. Goldfarb, 47 USPQ2d 1896 (Fed. Cir. 1998); Woodland Trust v. Flowertree Nursery, Inc., 47 USPQ2c 1363 (Fed. Cir. 1998). However, neither the Fed. Cir. or the United States Supreme Court have addressed the issue raised in the current case. In the current case the Fed. Cir. noted that: the purported inventors who testified were non-parties and their testimony concerned unpatented prior invention. Although Thomson argues that the corroboration rule is justified here because both testifying witnesses were involved in business that supplied goods and services to Quixote, this does not rise to the level of self-interest required to justify triggering application of the corroboration rule. In fact, Thomson's only reference to the record showing this potential source of bias is a transcript of Thomson's cross examination of one of the witnesses, which means that the jury had the necessary facts to assess the credibility of the witnesses.