In Dionex Softron GmbH v Agilent Technologies, Inc., [2021-2372] (January 6, 2023), the Federal Circuit affirmed the PTAB decision awarding priority to Agilent in an interference.

In the interference, the Board identified Dionex as the senior party and Agilent as the junior party, thereby requiring that Agilent prove priority by a preponderance of the evidence.

In its analysis, the Board applied the rule of reason and found that the testimony of Wolfgang Kretz, one of Agilent’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.

Based on the foregoing, the Board entered judgment on priority for Agilent and against Dionex and refused Dionex’s claims. Dionex timely appealed.

The Federal Circuit said that 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. When 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 language.

The Federal Circuit said that the Board did not err in concluding that Agilent’s specification 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 description support for its ordered steps construction of the claim, but we have rejected this proposed construction. Since the Federal Circuit affirmed the Board’s claim construction, Dionex’s written description arguments necessarily failed.

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 corroborated
and occurred prior to Dionex’s earliest conception date. The Board’s finding of corroboration, under the rule of reason, is supported by substantial evidence.