## Facts

- Thomson, S.A., assignee of patents covering optical information-storage technology used in compact discs, sued Quixote Corp. and Disc Manufacturing, Inc. for infringing four patents relating to CD technology.
- The parties tried the case using three representative claims: claims 1 and 13 of U.S. Patent No. 4,868,808 and claim 1 of U.S. Patent No. 5,182,743.
- The parties stipulated Thomson’s invention date as August 25, 1972.
- Quixote asserted invalidity under pre-AIA 35 U.S.C. § 102(g), contending that MCA Discovision, Inc. had earlier made the same invention in the United States through an unpatented laser videodisc system.
- Quixote presented testimony from MCA personnel describing the videodisc system and its development before August 1972, along with additional evidentiary support.
- The jury found the representative claims literally infringed but invalid as anticipated under § 102(g).
- Thomson moved for JMOL or a new trial, arguing Quixote failed to prove all claim limitations and that MCA witness testimony lacked required corroboration.
- The district court denied post-trial relief, finding substantial evidence supported the jury’s § 102(g) anticipation verdict under the clear-and-convincing standard.

## Issues

1. Whether substantial evidence supported denial of JMOL/new trial where the jury found, by clear and convincing evidence, that a third party’s prior invention anticipated the asserted claims under 35 U.S.C. § 102(g).
2. Whether, and to what extent, testimony from non-party MCA employees about prior invention and dates required corroboration, and whether the record provided sufficient corroboration.

## Decision

- The Federal Circuit affirmed the denial of JMOL and a new trial.
- The court held that substantial evidence supported the jury’s finding that MCA made the invention in the United States before Thomson’s stipulated invention date and that the MCA work met each claim limitation.
- The court rejected Thomson’s argument that MCA employee testimony was legally insufficient for lack of corroboration, reasoning that the strict corroboration rule aimed at interested inventors did not apply the same way to disinterested third-party witnesses.
- The court further held that, even if corroboration were required, the record contained adequate corroborative material under the rule-of-reason approach.
- The court declined to reweigh evidence or reassess credibility determinations made by the jury.

## Legal Principles

- Under pre-AIA 35 U.S.C. § 102(g), a patent claim is anticipated if, before the patentee’s invention date, another in the United States made the same invention, including all claim limitations, and did not abandon, suppress, or conceal it.
- On JMOL review, the question is whether a reasonable jury could find for the verdict winner when the evidence is viewed in that party’s favor; appellate courts do not reweigh evidence or reassess credibility.
- Invalidity must be proven by clear and convincing evidence, and the JMOL inquiry is whether substantial evidence supports a jury’s finding under that burden.
- Corroboration doctrine primarily addresses the risk of self-serving inventor testimony; testimony from disinterested third-party witnesses is not subject to the same strict corroboration demands.
- When corroboration is considered, the rule-of-reason governs: the factfinder evaluates the totality of testimonial and documentary evidence rather than requiring exact documentary proof for every asserted detail.

## Conclusion

The Federal Circuit upheld a jury verdict that, despite literal infringement, the asserted representative claims were invalid under § 102(g) because substantial evidence showed a third party had previously made the same invention in the United States, and the testimony establishing that prior invention did not fail for lack of corroboration under the applicable evidentiary standards.


Thomson, S.A. v. Quixote Corp., 166 F.3d 1172 (Fed. Cir. 1999)