Dionex Softron Gmbh v. Agilent Technologies, Inc.

56 F.4th 1353

• Court: Court of Appeals for the Federal Circuit
• Decided: January 6, 2023
• Docket: 21-2372
• Status: Published

Opinion

Case: 21-2372 Document: 47 Page: 1 Filed: 01/06/2023

United States Court of Appeals for the Federal Circuit ______________________

DIONEX SOFTRON GMBH, Appellant

v.

AGILENT TECHNOLOGIES, INC., Appellee ______________________

2021-2372 ______________________

Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. 106,109. ______________________

Decided: January 6, 2023 ______________________

ANDREW JAMES ISBESTER, Kilpatrick Townsend & Stockton LLP, San Francisco, CA, argued for appellant. Also represented by BYRON ROBERT CHIN; KRISTOPHER L. REED, Dallas, TX.

JOHN B. SGANGA, JR., Knobbe, Martens, Olson & Bear, LLP, Irvine, CA, argued for appellee. Also represented by EDWARD M. CANNON, PHILIP MARK NELSON. ______________________

Before REYNA, CHEN, and STARK, Circuit Judges. Case: 21-2372 Document: 47 Page: 2 Filed: 01/06/2023

STARK, Circuit Judge. Dionex Softron GmbH (“Dionex”) appeals the Patent Trial and Appeal Board’s (“Board”) judgment in an inter- ference proceeding, awarding priority to Agilent Technolo- gies, Inc. (“Agilent”). The parties dispute priority, claim construction, written description support, conception, and reduction to practice. We affirm. I This case involves an unusual history, in which the parties copied one another’s claims in separate attempts to provoke an interference. First, Agilent substantially cop- ied Dionex’s claims but, nonetheless, failed to provoke an interference. 1 Agilent then amended its claims, and Di- onex subsequently copied those amended claims verbatim, resulting in the interference at issue. The instituted inter- ference was between Agilent’s U.S. Patent Application No. 15/965,402 and Dionex’s U.S. Patent Application No. 16/016,866. In the interference, the Board identified Dionex as the senior party and Agilent as the junior party, thereby re- quiring that Agilent prove priority by a preponderance of the evidence. The Board defined a single count as claim 1 of Agilent’s patent application, reproduced below: A method of operating a liquid chromatography system, the liquid chromatography system com- prising a liquid chromatography column and an in- jection valve, the method comprising: isolating a sample loop of the liquid chromatog- raphy system from a high-pressure fluidic path in

1 Specifically, Agilent substantially copied the claims of Dionex’s U.S. Patent Application No. 15/596,738, which eventually became Dionex’s U.S. Patent No. 10,031,112 (“’112 patent”). Case: 21-2372 Document: 47 Page: 3 Filed: 01/06/2023

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fluid communication with the liquid chromatog- raphy 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 de- vice for loading a sample on the sample loop, and isolating the sample loop comprises placing the in- jection valve in a PRESSURE COMPENSATION position, wherein a volume of the metering device is defined by a chamber in which a piston is recip- rocatingly 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 pres- sure to essentially correspond to the pump pres- sure of the high-pressure fluidic path; wherein decreasing the volume includes forward- ing the piston within the chamber by the determined movement amount from the first position to the sec- ond position; wherein the metering device and the sample loop are in fluid communication in each position of the injection valve. J.A. 15 (italicized emphasis added by Board). In the interference, Dionex moved for judgment that Agilent’s claims were invalid based on a lack of written de- scription support for the following limitation: “determining a movement amount of the piston within the chamber from a first position to a second position to increase a pressure Case: 21-2372 Document: 47 Page: 4 Filed: 01/06/2023

in the sample loop from an essentially atmospheric pres- sure to the pump pressure, based on the pump pressure.” J.A. 16. Dionex argued that “determining a movement amount” had to occur prior to “forwarding the piston” but the relevant specification did not provide adequate written description support for this order of operations. Dionex contended that the relevant specification from which to measure the adequacy of the written description support was generally its ’112 patent, but Dionex stated that some terms, such as “determining,” had to be construed in light of Agilent’s ’402 application. Agilent maintained that the limitation had to be viewed solely in light of its own speci- fication. The Board concluded that Agilent’s specification con- trolled, construed the disputed claim language in light of that specification, and found that the specification pro- vided adequate written description support. Under the ap- plicable broadest reasonable construction standard, the Board rejected Dionex’s proposal to limit claim scope to re- quire a determination of a movement amount before for- warding the piston. Instead, the Board construed the claim language as permitting real-time, empirical determination of a movement amount while forwarding the piston to achieve pressure equalization between the sample loop and the pump pressure. The Board found adequate written de- scription support for the thus-construed determining limi- tation based on paragraphs 81-84 of Agilent’s specification, as attested to by Agilent’s expert. Later in the proceeding, Agilent and Dionex separately moved for judgment on the basis of priority due to their re- spective alleged dates of conception and reduction to prac- tice. The Board granted Agilent’s motion and denied Dionex’s motion, finding that Agilent proved conception as of May 1, 2007 and actual reduction to practice as of June 1, 2007, all before Dionex’s earliest alleged conception date of December 4, 2007. Case: 21-2372 Document: 47 Page: 5 Filed: 01/06/2023

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In its analysis, the Board applied the rule of reason and found that the testimony of Wolfgang Kretz, one of Ag- ilent’s two co-inventors, was sufficiently corroborated by two of his co-workers, Manfred Berndt and Martin Bäuerle, who had worked near Kretz during the relevant time. Berndt and Bäuerle testified that Kretz successfully tested a prototype encompassing all limitations of the count by June 1, 2007. The Board discussed Bäuerle’s testimony in detail. It noted that Bäuerle testified he had witnessed, in the rele- vant time frame, the successful prototype as well as a doc- ument depicting the prototype. Although the document, which was admitted as Exhibit 2152, had a creation date of April 4, 2006 and a last modified date of November 11, 2008, the Board credited Bäuerle’s testimony that the doc- ument had existed and shown the prototype’s configuration during the relevant time frame; i.e., by June 1, 2007. The Board further noted that Agilent’s expert testified that the configuration in Exhibit 2152 was for an apparatus that would achieve the count’s pressure equalization require- ment. The Board rejected Dionex’s contention that Exhibit 2152 lacked a pressure sensor necessary for the claimed pressure equalization, instead crediting Bäuerle’s corrobo- rating testimony that Kretz used a high-pressure pump with a built-in pressure sensor to achieve pressure equali- zation. The Board also denied Dionex’s requests to draw negative inferences from the lack of testimony from Kretz’s co-inventor, Bernd Glatz, 2 and the lack of contemporane- ous documentary evidence (such as photographs, technical drawings, schematics, firmware specifications, laboratory notebooks, and research and development reports).

2 Agilent explained to the Board that Glatz, like Kretz, was retired and argued that his testimony would have been cumulative of Kretz’s. Case: 21-2372 Document: 47 Page: 6 Filed: 01/06/2023

Although the Board noted that it need not evaluate conception, because Agilent proved actual reduction to practice prior to Dionex’s earliest alleged conception date, the Board determined that Agilent proved conception as of May 1, 2007. Based on the foregoing, the Board entered judgment on priority for Agilent and against Dionex and refused Di- onex’s claims. Dionex timely appealed. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A) (2012) and 35 U.S.C. § 141 (2012). See Technical Correc- tions–Leahy-Smith America Invents Act, Pub. L. No. 112- 274, 126 Stat. 2456, 2458 (2013). 3 II We review the Board’s claim construction based on in- trinsic evidence de novo and subsidiary factual findings based on extrinsic evidence for substantial evidence. See Teva Pharms. USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 331- 32 (2015). In an interference proceeding, claims are given their broadest reasonable construction in light of their orig- inating specification. See ULF Bamberg v. Dalvey, 815 F.3d 793, 796 (Fed. Cir. 2016). Determining which specifi- cation to consult as the “originating specification” in con- nection with claim construction is a legal question we review de novo. See Agilent Techs., Inc. v. Affymetrix, Inc., 567 F.3d 1366, 1374 (Fed. Cir. 2009). Satisfaction of the written description requirement presents a question of fact we review for substantial evi- dence. See ULF Bamberg, 815 F.3d at 797. We review de novo the Board’s legal conclusions concerning priority, con- ception, and reduction to practice; the factual findings

3 We apply pre-AIA law. See, e.g., Regents of Univ. of Cal. v. Broad Institute, Inc., 903 F.3d 1286, 1291 n.2 (Fed. Cir. 2018). Case: 21-2372 Document: 47 Page: 7 Filed: 01/06/2023

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underpinning these conclusions, including findings relat- ing to corroboration, we review for substantial evidence. See Taskett v. Dentlinger, 344 F.3d 1337, 1339-40 (Fed. Cir. 2003); Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1171 (Fed. Cir. 2006). We review the Board’s evidentiary deter- minations, including whether to draw an adverse infer- ence, for abuse of discretion. See Chen v. Bouchard, 347 F.3d 1299, 1307 (Fed. Cir. 2003); see also Overnite Transp. Co. v. N.L.R.B., 140 F.3d 259, 266 n.1 (D.C. Cir. 1998) (find- ing, in context of NLRB, that “the decision of whether to draw an adverse inference has generally been held to be within the discretion of the fact finder”). III On appeal, the parties dispute whether the Board erred by evaluating claim construction and written description support in light of Agilent’s specification instead of Di- onex’s. They further disagree as to whether the Board erred in the construction it adopted and its findings of ad- equate written description support, priority, and reduction to practice. 4 We address these issues in turn. A The Board properly treated Agilent’s specification as the “originating specification” for purposes of construing the disputed claim terms and evaluating the sufficiency of written description support for the claims. “[W]hen a party challenges written description support for an interference count or the copied claim in an interference, the originating disclosure provides the meaning of the pertinent claim

4 The parties also dispute conception, but because we agree with the Board that Agilent reduced the invention to practice before Dionex’s earliest possible date of concep- tion, Agilent did not have to prove conception. See Fox Grp., Inc. v. Cree, Inc., 700 F.3d 1300, 1304-05 (Fed. Cir. 2012). We need not and do not address conception. Case: 21-2372 Document: 47 Page: 8 Filed: 01/06/2023

language.” Agilent Techs., 567 F.3d at 1375. This rule was created “to ensure that the PTO would only declare an in- terference if both parties had a right to claim the same sub- ject matter.” Id. (quoting Rowe v. Dror, 112 F.3d 473, 479 (Fed. Cir. 1997)). Here, it was Dionex’s copying of Agilent’s claims that provoked the interference. That renders the Agilent appli- cation 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 ef- fort between the same parties to provoke an interference, we neither see nor have been provided any persuasive rea- son not to apply our rule in this context. B The Board did not err in construing the claim language to permit “determining a movement amount” while “for- warding the piston . . . by the determined movement amount.” Dionex wrongly contends that “determining” has to occur before “forwarding” because of the “logical struc- ture” of the claim language and because the Board’s con- struction renders “the determined movement amount” language superfluous. See Opening Br. 37-39. Although the language of a method claim does not gen- erally require that its steps be undertaken in the listed or- der, sometimes either logic or grammar mandates a particular order of steps. See Mformation Techs., Inc. v. Rsch. in Motion Ltd., 764 F.3d 1392, 1398-1400 (Fed. Cir. Case: 21-2372 Document: 47 Page: 9 Filed: 01/06/2023

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2014). 5 Here, neither the logic nor grammar of the claim compel such a result under the applicable broadest reason- able construction approach. Instead, as the Board con- cluded, “determining” 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, a comparison described by Agilent’s expert and credited by the Board. Our conclusion does not render any claim language su- perfluous. Instead, as the Board concluded, “the deter- mined movement amount” portion of the claim is necessary in order for the method to accurately move the piston in a manner that achieves the claimed pressure equalization. C The Board did not err in concluding that Agilent’s spec- ification provided adequate written description support. Dionex’s arguments on this point depend entirely on our adopting Dionex’s proposed claim construction. In other words, Dionex contends there is not adequate written de- scription support for its ordered steps construction of the claim, but we have rejected this proposed construction. Since we affirm the Board’s claim construction, Dionex’s written description arguments necessarily fail. D The Board did not err in awarding priority to Agilent. Substantial evidence supports the Board’s findings that Agilent’s actual reduction to practice was sufficiently cor- roborated and occurred prior to Dionex’s earliest concep- tion date.

5 A specification, and not just the claim itself, may also directly or implicitly require an order of steps, see Mformation, 764 F.3d at 1398, but Dionex does not argue such is the case here. Case: 21-2372 Document: 47 Page: 10 Filed: 01/06/2023

Priority depends on conception and reduction to prac- tice. See, e.g., Cooper v. Goldfarb, 154 F.3d 1321, 1327 (Fed. Cir. 1998). “[T]o establish an actual reduction to practice, the inventor must prove that: (1) [the inventor] constructed an embodiment or performed a process that met all the limitations of the interference count; and (2) [the inventor] determined that the invention would work for its intended purpose.” Id. Additionally, an inventor’s testimony must be corroborated by independent evidence. However, a “rule of reason” analysis is applied to determine whether an inven- tor’s testimony regarding reduction to practice has been sufficiently corroborated. The rule requires an evaluation of all pertinent evidence when deter- mining the credibility of an inventor’s testimony. In order to corroborate a reduction to practice, it is not necessary to produce an actual over-the-shoul- der observer. Rather, sufficient circumstantial ev- idence of an independent nature can satisfy the corroboration requirement. Furthermore, an ac- tual reduction to practice does not require corrobo- ration for every factual issue contested by the parties. . . . [T]he law does not impose an impossi- ble standard of “independence” on corroborative ev- idence by requiring that every point of a reduction to practice be corroborated by evidence having a source totally independent of the inventor; indeed, such a standard is the antithesis of the rule of rea- son. In the final analysis, each corroboration case must be decided on its own facts with a view to de- ciding whether the evidence as a whole is persua- sive. Id. at 1330-31 (internal quotation marks and citations omitted). Dionex argues that the Board’s finding of corrobora- tion, particularly with respect to the claimed pressure Case: 21-2372 Document: 47 Page: 11 Filed: 01/06/2023

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equalization functionality, is not supported by substantial evidence. In this regard, Dionex attacks various portions of Berndt’s and Bäuerle’s testimony, and emphasizes the last modified date and contents of Exhibit 2152. Dionex further argues that the Board erred by failing to draw neg- ative inferences based on a lack of co-inventor testimony and a lack of certain documentary evidence. On each of these points, Dionex is mistaken. 1 The Board’s finding of corroboration, under the rule of reason, is supported by substantial evidence. Kretz’s testi- mony was corroborated by Bäuerle, Berndt, and Exhibit 2152. As the Board recounted, Bäuerle and Berndt both worked near Kretz and witnessed a successful working pro- totype containing all of the functionality and limitations of the count during the relevant time. While Exhibit 2152 was last modified after reduction to practice, there was ev- idence it was created before then, including Bäuerle’s tes- timony that the successful prototype had the configuration generally depicted in Exhibit 2152. The Board also credited Agilent’s expert’s opinion that the Exhibit (whatever the timing of its creation) disclosed a configuration that was designed to achieve the claimed pressure equalization. Similarly, the Board credited Bäuerle’s testimony that Kretz had used a high-pressure pump with a built-in pressure sensor to achieve pressure equalization. Taken as a whole, there was substantial ev- idence under the rule of reason for finding corroboration here. Dionex’s efforts to demonstrate a lack of substantial ev- idence of corroboration are unpersuasive. Dionex argues that Bäuerle’s testimony was not independent because (1) he did not know the prototype’s hydraulic configuration; (2) his knowledge of Kretz’s work to create the prototype’s specialized grooves did not demonstrate his knowledge of the grooves’ purpose; (3) his knowledge of a high-pressure Case: 21-2372 Document: 47 Page: 12 Filed: 01/06/2023

pump as a metering device conflicted with his admission that he did not know the prototype’s specific hydraulic con- figuration; and (4) his knowledge of pressure equalization was based on documentary evidence produced by Kretz. Under the flexible rule of reason approach, there was noth- ing inappropriate about the Board accepting Bäuerle’s tes- timony. Bäuerle may not have known every detail, but such omniscience is unnecessary under the rule of reason. See, e.g., Goldfarb, 154 F.3d at 1330-31. He testified that he witnessed a successful prototype and, the Board found, “understood enough to know that the prototype performed all steps of the count and that the prototype had the con- figuration generally depicted in Exhibit 2152.” J.A. 55. The Board’s findings are supported by substantial evi- dence. Dionex similarly argues that Berndt’s testimony was not independent because he could only state that others considered the prototype a success. The Board did not rely on Berndt’s testimony in great depth. In any event, his tes- timony was, at least in part, independent of Kretz and the Board was free to find it had some corroborative value. See Goldfarb, 154 F.3d at 1331 (rule of reason does not require impossible standard of total independence from inventor). Nothing about the Board’s consideration of Berndt’s testi- mony detracts from the substantial evidence supporting the Board’s conclusions. Dionex also argues that Exhibit 2152 could not corrob- orate Kretz’s testimony because it was modified after Ag- ilent’s purported June 1, 2007 actual reduction to practice, even allowing that the document may have been created before that date. This contention lacks merit. The Board found that the Exhibit as it existed at the relevant date gen- erally depicted a prototype that met the limitation of the claim. As a corollary, the Board was unpersuaded by Di- onex’s effort to prove that the Exhibit only came to include this depiction at a later date. As we have already ex- plained, the record contains substantial evidence, Case: 21-2372 Document: 47 Page: 13 Filed: 01/06/2023

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particularly Bäuerle’s testimony, to corroborate Kretz’s testimony that Exhibit 2152 depicted such an embodiment at the pertinent date. See, e.g., In re NTP, Inc., 654 F.3d 1279, 1291-92 (Fed. Cir. 2011); see also Kolcraft Enters., Inc. v. Graco Children’s Prods., Inc., 927 F.3d 1320, 1324 (Fed. Cir. 2019); Apator Miitors ApS v. Kamstrup A/S, 887 F.3d 1293, 1297 (Fed. Cir. 2018). 2 Finally, Dionex argues that the Board erred by failing to draw negative inferences against Agilent based on a lack of co-inventor testimony and a lack of certain documentary evidence. We again disagree with Dionex. There is no per se requirement to infer that the testi- mony of an inventor who fails to testify would be harmful to the position of his co-inventor. See Borror v. Herz, 666 F.2d 569, 574-75 (C.C.P.A. 1981); see also id. at 574 (“[T]he absence of the inventor’s testimony does not require an in- ference that his testimony would have been inconsistent with other evidence.”). Instead, the Board has discretion to determine whether to apply a negative inference based on what “is reasonable under the totality of evidence in the case.” Id. at 574. While “the unexplained failure to call any known non-hostile person who has direct knowledge of facts being developed” may raise an inference that the tes- timony would be unfavorable, such an inference is not man- datory, and we have found it unwarranted where “the testimony of such a witness would be cumulative or inferior to what is utilized.” Id. at 573-74. Here, the Board did not abuse its discretion in deciding not to draw negative infer- ences, particularly given Agilent’s representations that the testimony of the co-inventor, Glatz, would have been cumu- lative of Kretz’s testimony and inferior to it, for reasons in- cluding that Kretz testified about materials on his own hard drive. Dionex contends that “a ‘strong negative inference’ is appropriate ‘[w]here ambiguities exist in the record or Case: 21-2372 Document: 47 Page: 14 Filed: 01/06/2023

there is conflicting testimony as to events which an inven- tor’s testimony could clear up.’” Opening Br. 47-48 (quot- ing Borror, 666 F.2d at 574). This is not a correct statement of the law. In Borror, we explained that, under the circumstances described by Dionex, “a strong negative inference may be reasonable.” 666 F.2d at 574 (emphasis added). Further, “[i]f an explanation is given for failure to call a witness which in ordinary logic or experience is sat- isfactory, no negative inference at all may be appropriate.” Id. The Board found this is such a case, and we have no basis on which to disagree. 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. Dionex asserts that “industry norms” should have caused Agilent to have created documents other than those produced in the interference, see Opening Br. 50-52, but the Board was not required to accept this contention. Nor was it required to reach the additional conclusion that the absence of such documents implies that the purport- edly “missing” documents would harm Agilent’s case. In short, again, the Board did not abuse its discretion. IV We have considered the parties’ remaining arguments and find them unpersuasive. For the foregoing reasons, we affirm the judgment of the Board. AFFIRMED COSTS No costs.