Board's determination of priority, while "very close call," supported by substantial evidence
April 08, 2009
In a recent decision, the Federal Circuit affirmed a decision of the Board of Patent Appeals and Interferences awarding priority of invention to the senior party in an interference proceeding. The Board held there was sufficient corroborating evidence of an inventor's testimony that the senior party appreciated its reduction to practice worked and met the key limitation of the interference count. The Federal Circuit affirmed. On appeal, the junior party only challenged the Board's interpretation of the corroborating evidence and not the underlying conclusion of corroboration based on that evidence. While the court held it was "a very close call," based on the deferential substantial evidence standard of review, the court affirmed the Board's decision.More detail regarding Henkel Corp. v. Procter & Gamble Co. after the jump.The case involved an interference between Procter & Gamble ("P&G") and Henkel Corporation. The invention at issue is a dishwater detergent tablet. P&G holds U.S. Patent No. 6,399,564 directed to this invention; Henkel holds a pending application to the same invention. The USPTO, therefore, declared an interference, naming the following interference count relevant to the appeal (relevant limitation emphasized):
A detergent tablet comprising a compressed portion and a non-compressed portion wherein:
a) said compressed portion comprises a mould and dissolves at a faster rate than said non-compressed portion on a weight by weight basis, measured using a SOTAX dissolution test method;
b) said non-compressed portion is in solid, gel or liquid form;
c) said non-compressed portion is delivered onto said mould of said compressed portion; and
d) said non-compressed portion is partially retained within said mould; and wherein said non-compressed portion is affixed to said compressed portion by forming a coating over the non-compressed layer to secure it to the compressed portion or by hardening.
This is the second appeal in the case. In the first appeal (blogged about here), the Federal Circuit remanded the case to the Board after determining the Henkel inventors appreciated the invention before P&G's priority date. On remand, the Board had to determine whether P&G could prove earlier priority. The Board held "P&G proved by at least a preponderance of the evidence that it made, and at least one inventor appreciated, an embodiment within the scope of Count 2, the sole count in the interference, prior to Henkel's awarded priority of invention to P&G." Specifically, the Board held that there was sufficient evidence that McGregor, a P&G employee, reduced the invention in question to practice in February 1997. This predated Henkel's reduction to practice, which the Federal Circuit in the first appeal held was at least as early as May 1997. The Board relied on McGregor's Record of Invention, McGregor's subsequent declaration in the interference proceeding, and a January 1997 Monthly Report by Sabine Metzger-Groom. The Metzger-Groom Report documented the preparation and testing of the tablet discussed in the McGregor Record of Invention. McGregor testified he appreciated his invention contained two separate parts with different dissolution rates as of February 1997, and the Board held McGregor had therefore reduced the invention to practice before Henkel did. Accordingly, the Board granted P&G's motion for priority. Henkel appealed again.This time the Federal Circuit affirmed. To establish an actual reduction to practice, the inventor must prove (internal citations and quotations omitted):
(1) he constructed an embodiment or performed a process that met all the limitations of the interference count; and (2) he determined that the invention would work for its intended purpose. The inventor must also contemporaneously appreciate that the embodiment worked and that it met all the limitations of the interference count.
In the case at hand, the only limitation at issue was the dissolution rate limitation. Accordingly, the inventors needed only to appreciate "the dissolution rate of the compressed region is greater than the dissolution rate of the other region."The only issue on appeal was the Board's interpretation of the Metzger-Groom Report. The court's review is confined to question of whether substantial evidence supported the Board's determination. The Federal Circuit determined the Board's interpretation was supported by substantial evidence. As described by the court, the Report states: "'the performance of dimple tablets is slightly worse than that of regular tablets,' noting that the loss of performance could be a result of 'slower release of NB-base from the dimple vs. regular tablets.'" The Board interpreted this as corroborating McGregor's affidavit testimony that he appreciated one portion of McGregor's dual component tablet dissolved at a slower rate than the other. While the court observed "[t]he interpretation of the critical portion of the Metzger-Groom Report is a very close call, and can reasonably go either way," because the Board's interpretation was reasonable, it was supported by substantial evidence. Because Henkel only challenged the Board's interpretation of the Metzger-Groom Report and not the Board's conclusion of corroboration based on that interpretation, the court affirmed the Board's award of priority of invention to P&G.To read the full decision in Henkel Corp. v. Procter & Gamble Co., click here.
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