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When you attempt to enforce your patent, how do you deal with an indirect attack upon the patent’s validity based upon unsupported evidence in the form of testimony of friends, relatives or business associates of the infringer? Two recent decisions of the Federal Circuit give food for thought regarding what supporting evidence is needed to establish a claim based upon prior invention or prior public use of the invention by persons not directly connected to the suit.

The first case, decided in January 1999, is Thomson v. Quixote, 49 U.S.P.Q.2d 1530 (Fed. Cir., Jan. 25, 1999). In this case, the Court addressed the issue of whether non-party inventors need corroborating testimony that their own prior invention anticipated, under 35 U.S.C. §102(g) of the patent statutes, the invention covered by the patent in suit. Section 102(g) states that a person shall not be entitled to a patent if the invention was previously made by another who had not concealed, abandoned or surpressed it. As a basis for its ruling that corroboration is not needed, the Court reasoned that a key purpose for the corroboration rule in patent infringement suits is to counterbalance the self-interest of a testifying inventor against the patentee. On this basis, the Court held that corroboration is only necessary where the testifying inventor is “a named party, an employee of or assignor to a named party, or otherwise is in a position where he or she stands to directly and substantially gain by his or her invention being found to have priority over the patent claims at issue” in the suit. In this regard, the Court observed that the purported inventors were testifying to an unpatented prior art invention, not the invention in suit, and that they were non-parties to the suit.

The plaintiff Thomson contended that corroboration should be necessary since both of these non-party witnesses were involved in businesses that supplied goods and services to Quixote. The Court did not accept this argument, concluding instead that such a supplier/purchaser connection did not demonstrate a sufficient level of self interest in the suit to justify application of the corroboration rule. Consider, however, why it isn’t readily apparent that an infringer’s supplier or customer stands to gain significantly from the business relationship that might ensue from a holding of invalidity of the patent in suit. Clearly the Court’s holding favors patent infringers attempting to throw in everything but the (uncorroborated) proverbial kitchen sink into their invalidity defense, notably in cooperation with their suppliers.

Compare the decision in the Thomson case with the Federal Circuit’s 1998 decision in Woodland Trust v. Flowertree Nursery Inc., 47 U.S.P.Q.2d 1363 (Fed. Cir., July 10, 1998). In Woodland Trust, uncorroborated oral testimony by friends and business associates of the alleged infringer was used to attack the validity of the patent in suit under 35 U.S.C. B102(a) or 102(b) of the patent statutes based upon an alleged prior public use of the patented invention. Section 102(a) establishes that a person cannot patent what is already known to others, whereas Section 102(b) addresses an inventor’s own prior commercial use or sale as potential bars to the patent. The oral testimony given in the district court was regarded with skepticism by the Federal Circuit, which noted that the testimony concerned events purported to have occurred many years before the suit, and was given by relatives and employees of the patent holder. In reversing the district court’s holding of invalidity of the patent based upon this testimony, the Federal Circuit emphasized “the frailty of memory of things long past and the temptation to remember facts favorable to the cause of one’s relative or friend”.

In light of the Federal Circuit’s holding in Thomson, the result in Woodland Trust should provide small comfort to patent owners attempting to enforce their patent and facing a counterclaim of invalidity based upon an alleged prior use or invention. This is particularly true where the witness testifying in support of the prior use or invention, although not corroborated by others, is (a) testifying as to relatively recent events, (b) is not directly linked as a friend, relative or business associate of the patentee, and (c) does not stand to directly and substantially gain from a holding of invalidity. Under these circumstances, there is a risk that uncorroborated oral testimony, standing alone, might meet the clear and convincing standard needed to invalidate a patent based upon prior invention or prior use of the invention.