(Patents) Corroboration Conundrum Revisited

September 1, 2000 Advisory

In our last Client Advisory, we discussed the decision in Thomson S.A.
v. Quixote Corp
, 166 F.3d 1172 (Fed.Cir. 1999), regarding the asserted
invalidity of a patent based upon prior invention or prior public use by
another, where the proof of such activities was based upon the oral
testimony of two witnesses absent corroborating documentation. In a
seeming departure from the Supreme Court and its own precedent, the
Federal Circuit in Thomson 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
assignee 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" [emphasis
added]. We noted that the Thomson ruling would create uncertainty in the
minds of patentees regarding the validity and enforceability of their
Fortunately, the Federal Circuit has restored a degree of certainty in
this respect in its decision in Finnigan Corp. v. Intern. Trade Comm'n .,
180 F.3d 1354 (Fed.Cir.1999). In Finnigan , Bill Speranza represented the
patentee. By way of background, the Federal Circuit considered a ruling
of the International Trade Commission that Finnigan's ion trap mass
spectrometry method patent was invalid, based solely upon the testimony
of an "uninterested" witness who testified that he had publicly carried
out the method claimed in the subject patent in the presence of others
over three decades ago. There was no corroborating testimony or
documentation aside from a 1968 publication by the witness. Relying upon
the Supreme Court and its own precedent, the Federal Circuit reversed
the ITC and held that "the need for corroboration exists regardless
whether the party testifying concerning the invalidating activity is
interested in the outcome of the litigation... or is uninterested but is
testifying on behalf of an interested party... [u]ninterested witnesses
are also subject to the corroboration requirement." The Federal Circuit
went on to state that "corroboration is required of any witness whose
testimony alone is asserted to invalidate a patent, regardless of his or
her level of interest" [emphasis added].
For further information contact William J. Speranza 203-363-7637, [email protected]