Inventors' appreciation of invention intones interference's inversion
May 11, 2007

On appeal from the Board of Patent Appeals and Interferences (BPAI), the Federal Circuit today reversed a priority determination, finding that the junior party had shown conception and reduction to practice before the senior party's filing date. As a result, the case was remanded to determine whether the senior party could prove earlier priority.

More details of the case after the jump.

The invention relates to two-part detergent tablets used in automatic dishwashing machines. Procter & Gamble is the assignee of a patent [ed. note: like with another recent case, the opinion lists the patent number incorrectly. The number in the opinion is 6,339,564; the correct number is 6,399,564. Update (6/4): the Federal Circuit has now issued a correction to reflect the correct number.] relating to such a tablet, and Henkel Corporation is the assignee of two pending applications relating to similar tablets. The relevant interference count involved tablets relating to claim 1 of the '564 patent, claim 41 of one of the applications, or claim 44 of the other application. Claim 1 of the '564 is exemplary:

1. 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.

The dispute centered around whether the inventors of the Henkel applications appreciated their invention, and therefore had completed an actual reduction to practice before P&G's priority date. If they did, P&G would then have to show earlier conception to retain its patent. The BPAI found that the inventors had not appreciated the invention, and as a result awarded priority to P&G.

The appreciation question turned on what the Henkel inventors needed to know to appreciate the invention. As can be seen from the above exemplary claim, the compressed portion of the detergent tablet must dissolve "at a faster rate" than the non-compressed portion. P&G argued that carefully-controlled studies needed to be performed in order to come to this conclusion. The court rejected this, as Henkel performed tests during a regular dishwasher cycle, where it noted that the compressed portion dissolved during the prewash cycle, but the non-compressed portion did not. As stated by the court: "The count itself does not require specific ranges of dissolution rates; it simply requires that the dissolution rate of the compressed region be 'greater' than the dissolution rate of the other region." The board's requirement that specific dissolution rates needed to be shown to "appreciate" the invention was therefore legal error.

The court also noted that there was corroboration of this appreciation in the form of testimony by Henkel lab workers other than the inventors. As a result, the court reversed the board and remanded the case to the board so P&G could try to prove it is entitled to earlier priority than Henkel.

This case illustrates the importance of documenting research activities carefully, as you never know when it may be essential to show exactly when an invention was actually made in order to show earlier priority in an interference. Of course, if the current version of the Patent Reform Act of 2007 is passed implementing a first to file system, that could change.

To read the full decision in Henkel Corp. v. Procter & Gamble Co., click here.

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