1187, 1195, 26 USPQ2d 1031, 1037 (Fed. Cir. 1993). Sufficient circumstantial evidence of an
independent nature can satisfy the corroboration requirement. Knorr , 671 F.2d at 1373, 213 USPQ
at 200. Furthermore, an actual reduction to practice does not require corroboration for every factual
issue contested by the parties. See Ethicon, Inc. v. United States Surgical Corp., 135 F.3d 1456,
1464, 45 USPQ2d 1545, 1551 (Fed. Cir. 1998); Mann v. Werner , 347 F.2d 636, 640, 146 USPQ
199, 202 (CCPA 1965) ("This court has rejected the notion that each individual act in the reduction
to practice of a count must be proved in detail by an unbroken chain of corroboration."). However,
corroboration must not be based solely on evidence coming from the inventor himself. Reese v.
Hurst, 661 F.2d 1222, 1225, 211 USPQ 936, 940 (CCPA 1981); Hahn v. Wong , 892 F.2d 1028,
1032, 13 USPQ2d 1313, 1317 (Fed. Cir. 1989) ("The inventor . . . must provide independent
corroborating evidence in addition to his own statements and documents."). The corroboration “may
consist of testimony of a witness, other than an 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.” Hahn, 892 F.2d at 1032-33, 13 USPQ2d at 1317; Reese, 661 F.2d at 1225, 211 USPQ
at 940.
Geerts’ evidence is insufficient to prove an actual reduction to practice in June, 1992. The
the evidence lacks independent corroboration. We have not been directed to any evidence on this
alleged reduction to practice which is independent of information received from the inventors. All
of the evidence relied upon is either the testimony of the inventors (Hill GR 359-361, ¶¶ 17-21;
Geerts GR 212, ¶¶ 44-45, GR 305, ¶ 369; documents they prepared (Hill notebook, GR 360, ¶ 18,
GX 26, pp. 10-12; Patent Idea Record 16876, GR 306, ¶ 371, GR 364, ¶ 29, GX 27) or testimony
based upon information obtained directly from the inventors (Deck GR 60-61, ¶¶ 15-16). Deck
testified that he read and signed the Patent Idea Record 16876. Deck’s testimony only corroborates
the existence of Patent Idea Record 16876 on June 26, 1992, the date he testified that he read and
signed it. Thus, the evidence is insufficient to show an actual reduction to practice.
b.
However, Patent Idea Record 16876 establishes a conception of the invention by June 26,
1992. The test for conception is whether the inventor had an idea that was definite and permanent
enough that one skilled in the art could understand the invention; the inventor must prove his
21
Page: Previous 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 Next
Last modified: November 3, 2007