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potentially anticipatory patent); Henkel Corp. v. Procter & Gamble Co., 560 F.3d 1286

(Fed. Cir. 2009) (interference); Symantec Corp. v. Computer Assocs. Int’l, Inc., 522 F.3d

1279, 1295-96 (Fed. Cir. 2008) (“An alleged co-inventor's testimony, standing alone,

cannot rise to the level of clear and convincing evidence; he must supply evidence to

corroborate his testimony.”). However, this is not a case where witness testimony was

being used to overcome prior art by establishing an earlier date of invention.

To support its argument that S4 practiced the ’449 patent, Microsoft offered

testimony

by

a

former

i4i

employee

and

its

expert.

i4i

responded

with

evidence,

specifically testimony by S4’s inventors, that S4 did not practice the claimed method.

Though we require corroboration of “any witness whose testimony alone is asserted to

invalidate a patent,” Finnigan Corp. v. Int’l Trade Comm’n, 180 F.3d 1354, 1369-70

(Fed. Cir. 1999) (emphasis added), here the inventor testimony was offered by i4i in

response to Microsoft’s attack on the validity of the ’449 patent. It was not offered to

meet Microsoft’s burden of proving invalidity by clear and convincing evidence. Cf.

TypeRight Keyboard Corp. v. Microsoft Corp., 374 F.3d 1151, 1159-60 (Fed. Cir. 2004);

Tex. Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1217 (Fed. Cir. 2002); Finnigan,

180 F.3d at 1367. We know of no corroboration requirement for inventor testimony

asserted to defend against a finding of invalidity by pointing to deficiencies in the prior

art. Accordingly, we hold that corroboration was not required in this instance, where the

testimony was offered in response to a claim of anticipation and pertained to whether

the prior art practiced the claimed invention.

2009-1504

18

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