Interference No. 103,345
Staples contends that Jeffrey Staples's asserted
December 2, 1979, conception date is corroborated by Exhibit
I, which shows that date and which Staples contends need no
corroboration, since "[o]nly an inventor's testimony needs
corroboration," quoting Holmwood v. Sugavanam, 948 F.2d 1236,
1239, 20 USPQ2d 1712, 1715 (Fed. Cir. 1991). Staples has
taken this statement out of context. The court was simply
rejecting the Board's conclusion that corroboration was
required for the testimony of Dr. Zeck, who was not an
inventor; the court was not addressing the question of whether
an inventor's documents require corroboration. That question
was considered and answered in the affirmative in Hahn v.
Wong, 892 F.2d 1028, 1032-33, 13 USPQ2d 1313, 1317 (Fed. Cir.
1989):
The inventor . . . must provide independent
corroborating evidence in addition to his own
statements and documents. See Lacotte v. Thomas,
758 F.2d 611, 613, 225 USPQ 633, 634 (Fed. Cir.
1985). Such evidence "may consist of testimony of a
witness, other than the inventor, to the actual
reduction to practice or it may consist of evidence
of surrounding facts and circumstances independent
of information received from the inventor." Reese
v. Hurst v. Wiewiorowski, 661 F.2d 1222, 1225, 211
USPQ 936, 940 (CCPA 1981). See also Lacotte v.
Thomas, 758 F.2d at 613, 225 USPQ at 634 (citing
Reese); 37 C.F.R. § 1.608(b). "The purpose
of the rule requiring corroboration is to prevent
- 16 -
Page: Previous 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 Next
Last modified: November 3, 2007