Junior Party Agilent Wins Interference With Sufficiently Corroborated Evidence Of Priority Of Invention

• Jurisdiction: United States,Federal
• Law Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
• Subject Matter: Intellectual Property, Patent
• Author: Mr Barbara McCurdy, Stacy Lewis and Thomas Irving
• Published date: 28 February 2023

Holding

In Dionex Softron GmbH v. Agilent Technologies, Inc., Nos. 21-1794 and 21-2372, the Court of Appeals for the Federal Circuit ("the Federal Circuit") affirmed interference decisions awarding priority to Agilent. Dionex Softron GmbH v. Agilent Technologies, Inc., No. 21-2372 (Fed. Cir. Jan. 6, 2023) ("Dionex I") is an appeal of the Patent Trial and Appeal Board ("the Board")'s decision in Interference ("Int.") No. 106,109. Dionex Softron GmbH v. Agilent Technologies, Inc., No. 21-1794 (Fed. Cir. Jan. 6, 2023) ("Dionex II") is an appeal of the Board's decision in Int. No. 106,087.

Background

At issue in Int. No. 106,109 were Agilent's U.S. Pat. App. No. 15/965,402 ("the '402 application") and Dionex's U.S. Pat. App. No. 16/016,866 ("the '866 application"). Initially Agilent filed the '402 application substantially copying Dionex's U.S. Patent Application No. 15/596,738, which eventually became Dionex's U.S. Patent No. 10,031,112 ("'112 patent"). After failing to trigger an interference, Agilent amended its '402 application claims. Subsequently, Dionix's '866 application copied Agilent's '402 amended application claims verbatim. Id. At *2. The Board then declared an interference.

Board

The Board designated Dionex as the senior party based on its earlier filing date and defined a single count as claim 1 of Agilent's '402 application. The count read:

A method of operating a liquid chromatography system, the liquid chromatography system comprising a liquid chromatography column and an injection valve, the method comprising:

isolating a sample loop of the liquid chromatography system from a high-pressure fluidic path in fluid communication with the liquid chromatography column, wherein the high-pressure fluidic path is at a pump pressure, wherein the sample loop is in fluid communication with the injection valve and the sample loop comprises a metering device for loading a sample on the sample loop, and isolating the sample loop comprises placing the injection valve in a PRESSURE COMPENSATION position, wherein a volume of the metering device is defined by a chamber in which a piston is reciprocatingly mounted;

determining a movement amount of the piston within the chamber from a first position to a second position to increase a pressure in the sample loop from an essentially atmospheric pressure to the pump pressure, based on the pump pressure; and

while the sample loop is isolated from the high-pressure fluidic path, decreasing the volume of the...