An Abandoned Patent Application May Be Evidence of Conception, but not Reduction to Practice

Martek Biosciences Corp. v. Nutrinova, Inc., Nos. 2008-1459, -1476 (Fed. Cir. Sept. 3, 2009):

Relevant Holdings:

An abandoned patent application is evidence of conception, but it is insufficient to corroborate testimony that an alleged prior inventor reduced the invention to practice. Slip op. at 18.

“[A] patent claim is not necessarily invalid for lack of written description just because it is broader than the specific examples disclosed.” Slip op. at 9.

Relevant Facts:

Lonza argues that the district court improperly excluded its evidence that the claimed invention is not patent eligible because it was previously made by another inventor, Dr. Long. To corroborate Dr. Long’s testimony that he had reduced the claimed invention to practice prior to Martek’s date of invention, Lonza offered: (1) Dr. Long’s 1987 abandoned patent application and (2) evidence that the examples originally disclosed in that abandoned application were later reproduced, generating the results described in the application. The Court affirmed the district court's ruling on this issue.

Comments:

Regarding prior inventorship evidence, the Court recognizes that when a party seeks to introduce the testimony of an alleged prior inventor under § 102(g) for the purpose of invalidating a patent, that party is required to produce evidence corroborating the alleged prior inventor’s testimony. Slip op. at 15.

The case law is unequivocal that an inventor’s testimony respecting the facts surrounding a claim of derivation or priority of invention cannot, by itself, rise to the level of clear and convincing proof. Id. at p. 16. When determining whether an alleged inventor’s testimony is sufficiently corroborated, the Court applies a rule-of-reason analysis and consider all pertinent evidence. Id.

An alleged prior inventor must provide independent corroborating evidence in addition to his own statements and documents, such as testimony of a witness, other than the inventor, to the actual reduction to practice or evidence of surrounding facts and circumstances independent of information received from the inventor. Id. at 17-18.

“Documentary or physical evidence that is made contemporaneously with the inventive process provides the most reliable proof that the inventor’s testimony has been corroborated.” Id. at 18.

Therefore, it is desirable for a company to implement a R&D procedure that preserves contemporaneous documentary or physical evidence for any inventions, such as including a witness in the lab notebook. Certainly, this should not come as a surprise, as the case law has always been very clear on this point.