## Facts

- The dispute arose from a patent interference between Akers (senior party; application filed Mar. 4, 1968) and Hedgewick (junior party; application filed Mar. 22, 1968) concerning a safety package with a container and cap removable by combined axial and rotary motion.
- Hedgewick earlier invented the “Palm‑N‑Turn” safety cap, assigned to a related company; after that invention, Hedgewick and company personnel discussed and sketched alternative cap constructions.
- Some alternative-construction sketches were kept in an engineer’s files at the company and were described as inactive after early 1967, though accessible in the engineering area.
- Akers was hired as a consultant (Jan.–Aug. 1967) to assist with tooling and with production and quality control for the earlier cap; he had access to the engineering area and files, and employees were instructed not to withhold information from him.
- Hedgewick contended that his earlier conception for the interference subject matter was communicated to Akers during the consulting period and that Akers’s later filing therefore derived from Hedgewick’s invention.
- The principal evidence of communication was testimony from a company manager that he showed Akers sketches meeting the interference count; the sketches were not produced, no independent witness corroborated the showing, and Akers did not recall being shown such sketches.

## Issues

1. Whether Hedgewick proved, by the required standard, that Akers derived the invention from Hedgewick’s prior conception through a communication sufficient to make Akers not the true inventor.
2. Whether 35 U.S.C. § 104 bars use of foreign activities, knowledge, or use as evidence to establish derivation in an interference.

## Decision

- The court affirmed the Board of Patent Interferences’ award of priority to Akers.
- The court held Hedgewick did not meet the heavy burden of proving derivation because the record did not show clear, corroborated communication of the complete inventive concept to Akers.
- The court held that 35 U.S.C. § 104 does not preclude foreign evidence when offered to prove derivation (as distinct from proving priority by foreign acts).

## Legal Principles

- Derivation in an interference requires proof that the alleged prior inventor conceived first and communicated that conception to the other party so the latter’s work is not independent.
- The party asserting derivation bears a heavy burden (commonly stated as clear and convincing evidence), and proof cannot rest on speculation or uncertain recollection.
- Uncorroborated testimony from an interested witness is generally insufficient to establish key facts such as communication and derivation in an interference.
- Mere access or opportunity to view materials does not establish derivation absent proof of actual communication of the specific inventive concept.
- 35 U.S.C. § 104 limits reliance on foreign acts to establish priority of invention, but it does not bar evidence of foreign activity, knowledge, or use to establish derivation.

## Conclusion

Because Hedgewick’s evidence showed, at most, Akers’s access to company materials and relied on uncorroborated testimony about an alleged disclosure, the court upheld the Board’s finding that derivation was not proven and left priority with Akers, while clarifying that foreign evidence may be considered to prove derivation despite § 104.


Hedgewick v. Akers, 497 F.2d 905 (C.C.P.A. 1974)