A Critique Of Recent Opinions Of The Federal Circuit In Patent Interferences

I. Introduction

This article covers Federal Circuit precedential opinions^[1] published since those covered in the author's previous article by the same title at 75 JPTOS 448 (1993) through December 31, 1993.^[2]

The most welcome interference development of the year was the court's "clarification" of which party bears the burden of proof on preliminary motions in Kubota v. Shibuya^[3] ‹ a clarification which limited its prior holding in Martin v. Mayer^[4] to old rule interferences. On the other hand, the worst interference development of the year was the court's cavalier disregard of decades of CCPA precedent as to the weight of the burden of proof as to priority in patentee/applicant interferences where the applicant's effective filing date is after the patentee's issue data on the ground that "The issue of the quantum of proof required to establish priority in an interference with an issued patent, is one of first impression in the Federal Circuit."^[5]

II. Substantive Interference Law

A. Conception of a Method for Preparing a Compound Does Not Establish Conception of the Compound

In Fiers v. Sugano, 984 F.2d 1164, 25 USPQ2d 1601 (Fed. Cir. 1993) (opinion delivered by Circuit Judge Lourie for a panel that also consisted of Circuit Judge Michel and Senior Circuit Judge Cowen), the court held that conception of a method for preparing a compound does not establish conception of the compound itself.^[6]

In this three way interference, the count was drawn to a DNA compound.^[7] The party Fiers was a foreign applicant that had been accorded the benefit of its foreign priority application but that was seeking to establish priority by reliance on the prefiling date introduction into this country of a conception of a method of producing that compound coupled with diligence leading to the date of its foreign priority application.^[8] The party Fiers "devoted a considerable portion of his briefs to arguing that his method was enabling."^[9] However, the court did not decide that issue, saying that "The issue here . . . is conception of the DNA of the count, not enablement."^[10] Instead, it rejected the party Fiers's argument as a matter of law, saying that:

We also reject Fiers' argument that the existence of a workable method for preparing a DNA establishes conception of that material. Our statement in Amgen [Inc. v. Chugai Pharmaceutical Co., 927 F.2d 1200, 18 USPQ2d 1016 (Fed. Cir. 1991)] that conception may occur, inter alia, when one is able to define a chemical by its method of preparation requires that the DNA be claimed by its method of preparation.^[11]

The court recognized, of course, that, "in addition to being claimable by structure or physical properties, a chemical material can be claimed by means of a process,"^[12] but the party Fiers had apparently not attempted to do that,^[13] and the court held that "Conception of a substance claimed per se without reference to a process requires conception of its structure, name, formula, or definitive chemical or physical properties."^[14] Since the party Fiers could not prove a conception in the United States by that standard, it lost.

Comment: Suppose the party Fiers had presented a product-by-process claim. It seems quite probable that the examiner-in-chief would have designated that claim as corresponding to the count under the test enunciated in 37 CFR 1.601(n)^[15] and defined (or redefined on motion under 37 CFR 1.633(c) (1)) the interference on the basis of a count reciting the compound in conventional form or in product-by-process form.^[16] If the examiner-in-chief had done that, the result might well have been different.

Unfortunately for our edification, however, the party Fiers did not propose such a count or, apparently, present such a claim, and since it could have moved to do so under 37 CFR 1.633(c) (1) and 37 CFR 1.633(c) (2),^[17] it is presumably too late for it to do so now under 37 CFR 1.658(c)^[18] and Quadri v. Chu.^[19]

B. To Have a Written Description of a Compound Adequate for Priority Purposes, One Must Have a Written Description of the Compound Itself, Not Merely of a Method for Making It

In Fiers v. Sugano, 984 F.2d 1164, 25 USPQ2d 1601 (Fed. Cir. 1993) (opinion delivered by Circuit Judge Lourie for a panel that also consisted of Circuit Judge Michel and Senior Circuit Judge Cowen), which was a consolidated appeal by the two losers in an old rule, three-party interference,^[20] the party Revel et al. had been denied the benefit of its foreign priority application on the ground that it did not contain a written description of subject matter within the scope of the count, which read as follows:

A DNA which consists essentially of a DNA which codes for a human fibroblast interferon-beta polypeptide.^[21]

The court affirmed, holding that the board's decision was not clearly erroneous.^[22] In doing so, it said two very interesting things.

First, the court said that:

An adequate written description of a DNA requires more than a mere statement that it is part of the invention and reference to a potential method for isolating it; what is required is a description of the DNA itself. Revel's specification does not do that. Revel's application does not even demonstrate that the disclosed method actually leads to the DNA, and thus that he had possession of the invention. . . . ^[23]

Query: Does the court really mean that an application (whether the application in issue or an alleged priority application) has to "demonstrate" that a disclosed method actually leads to a claimed compound? This seems very odd, particularly if the party demonstrates (for instance, in a 37 CFR 1.639(b) declaration) that the disclosed method does in fact inherently lead to the claimed compound.

Of course, in this case, the party Revel et al. had submitted no evidence that the disclosed method would inherently lead to the claimed compound,^[24] and the court apparently assumed that the method only might (i.e., could) be used to obtain the claimed compound. Nevertheless, the court's language is troubling.

Second, the court said that:

Because the count at issue purports to cover all DNA's that code for ß-IF, it is also analogous to a single means claim, which has been held not to comply with the first paragraph of section 112. See In re Hyatt, 708 F.2d 712, 218 USPQ 195, 197 (Fed. Cir. 1983) ("the enabling disclosure of the specification [must] be commensurate in scope with the claim under consideration.")^[25] Claiming all DNA's that achieve a result without defining what means will do so is not in compliance with the description requirement; it is an attempt to preempt the future before it has arrived.

The Board's determination that the Israeli application does not contain a written description of a DNA coding for ß-IF was thus not clearly erroneous. The Board correctly determined that Revel is not entitled to the benefit of his November 1979 Israeli application since it fails to satisfy the written description requirement of section 112.^[26]

Query: What does the court mean by "defining what means will . . . [achieve a result]"? The count was drawn to a DNA compound, but here the court is apparently saying that, to have a written description of a compound, the priority document must contain an enabling disclosure of how to obtain the compound.^[27] That is, even if the party Revel et al.'s foreign priority application had had a description of the compound that was word-for-word identical to the count,^[28] it would not have had a written description of subject matter within the scope of the count unless it had disclosed a method for making that subject matter. This, it seems to me, confuses the enablement requirement with the written description requirement.^[29]

In any event, the court concluded that:

If a conception of a DNA requires a precise definition, such as by structure, formula, chemical name, or physical properties, as we have held [in Amgen Inc. v. Chugai Pharmaceutical Co., 927 F.2d 1200, 18 USPQ2d 1016 (Fed. Cir. 1991)], then a [written] description also requires that degree of specificity. To paraphrase the Board, one cannot describe what one has not conceived.^[30]

Comment: The court has apparently held that, to have a written description of a compound (at least for priority purposes) the priority document must have both an enabling disclosure of how to obtain the compound and a "precise definition" of the compound. However, how precise the precise definition must be will no doubt be decided on a case-by-base basis.

C. Claims Designated as Corresponding to a Count Fall with the Count If the Count is Anticipated by the Prior Art; if the Count is Unpatentable Over the Prior Art, the Patentability of the Claims Designated as Corresponding to the Count Must Be Determined on a Claim-By-Claim Basis

In In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993) (opinion delivered by Circuit Archer for a panel that also consisted of Circuit Judges Plager and Rader), the court imposed a bizarre limitation on the PTO's well settled rule that, if a count is held to be unpatentable over the prior art, all of each party's claims designated as corresponding to the count against which the prior art is available time wise are consequently likewise unpatentable over that prior art.^[31]

The board's rule is founded on administrative convenience. Based on the requirement of 37 CFR 1.601(f) that "each count shall define a separate patentable invention," the statement in 37 CFR 1.601(f) that "A claim of a patent or application which is not identical to a count, but which defines the same patentable invention as the count, is said to 'correspond substantially' to the count," and the definition of same patentable invention in 37 CFR 1.601(n),^[32] the board reasoned that, if a count is unpatentable over the prior art, every claim designated as corresponding to that count against which that prior art is available time wise is likewise unpatentable over that prior art. Thus, 37 CFR 1.633(a) motions for judgments that an opponent's claims designated as corresponding to a count are unpatentable over the prior art typically argue that the count, considered as a claim, is unpatentable over the prior art and that, accordingly, all of the opponent's claims designated as corresponding to the count are unpatentable over the prior art.^[33] The opponent can respond to such a motion by traversing it (i.e., by arguing either that the alleged prior art is not in fact available as a reference against it or that the count, considered as a claim, is patentable over the prior art); by moving under 37 CFR 1.633(i) and 37 CFR 1.633(c) (1) to substitute a narrower count that is patentable over the prior art; and/or by moving under 37 CFR 1.633(i) and 37 CFR 1.633(c) (4) to designate one or more of its claims as not corresponding to the imperiled count ^[34] (i.e., as patentable even if the count is not).^[35]

The bizarre limitation that the court has now placed on this administratively convenient procedure is that the board can rely on this strategy if the count is anticipated by the prior art, but not if the count is merely unpatentable over the prior art. According to the court:

As a general proposition, the position of the Commissioner that claims designated as corresponding to a count stand or fall with the patentability of the subject matter of the count is overbroad.^[36]

***

[I]f the . . . prior art reference anticipates the subject matter of the count (i.e., the prior art reference has elements corresponding to each and every limitation in the count), all claims that have been designated as corresponding to that count would be unpatentable for anticipation or obviousness. See 37 C.F.R. § 1.601(n). ^[37]

***

Where the rejection [sic; the rationale of the 37 CFR 1.633(a) motion] is for obviousness, however, the prior art and the subject matter of the count are not the same (i.e., the prior art reference does not have elements corresponding to each and every limitation in the count). In such case, the claims designated as corresponding substantially to the count are not necessarily the same invention as the prior art (i.e., anticipated or made obvious by that art) even though they are conceded to be the same invention as the count. * * * [Accordingly?] The PTO must determine, based on the actual prior art reference or references, whether claims not corresponding exactly to the count are unpatentable. ^[38]

Comments: The distinction made by the court makes no sense. Whether the count is anticipated by the prior art or only unpatentable over the prior art, the claims that do not correspond exactly to the count are, by definition, different from the count. That is, they each contain at least one limitation that is not contained in the count. The situation can be illustrated in Venn diagram form as follows, with the big circle being the count, the small circles being claims designated as corresponding to the count, R1, being a reference that anticipates the count, and R2, being a reference that only makes subject matter within the scope of the count obvious:

 

-- see printed publication for this image --

If the board can infer that those additional limitations contained in the claims but not in the count would not have made the subject matter of those claims patentable over R1, why can it not make that same inference with respect to R2? In each case, the respondent has the ability to try to pull its claims that do not correspond exactly to the count out of harm's way by filing appropriate 37 CFR 1.633(i)/1.633(c) (1) and/ or 37 CFR 1.633(i)/1.633(c) (4) motions.

On a more practical note, there are many pending interferences in which the parties (both movants and respondents) have relied on the rule that the court has now overturned. Presumably the board will not be able to apply the old rule to those cases, but will it permit the parties to rebrief pending 37 CFR 1.633(a) motions and/or pending unpatentability-over-the-prior-art issues at final hearing where one or both of the parties has relied on the old rule?^[39]

D. There is a Corroboration Requirement, But It Is Interpreted Under the Rule of Reason, Which Requires That All of the Inventor's Evidence Be Considered

In Price v. Symsek, 988 F.2d 1187, 26 USPQ2d 1031 (Fed. Cir. 1993) (opinion delivered by Chief Circuit Judge Nies for a panel that also consisted of Circuit Judges Archer and Mayer), the court reaffirmed that there is a corroboration requirement,^[40] but it interpreted that requirement exceedingly liberally.

According to the court, "an inventor's testimony, standing alone, is insufficient to prove conception -- some form of corroboration must be shown,"^[41] and, "As with the conception element of Price's case, corroboration is required to support his testimony regarding communication [the party Price had charged that the party Symsek had derived the invention from it] and reasonable diligence."^[42] However, the court explained that "A 'rule of reason' analysis is applied to determine whether the inventor's prior conception testimony [and, presumably, his or her communication, diligence, and actual reduction to practice testimony] has been corroborated."^[43]

So far, the court's analysis is neither novel nor startling. However, the court went on in a fashion that arguably weakens the corroboration requirement still further. The issue was whether a drawing by the inventor submitted to show conception of the invention had been adequately corroborated by a declaration which stated in relevant part that:

Exhibit [13] attached hereto is a true and accurate copy of Drawing No. PI 578-795 dated March 20, 1982. It is the regular practice of Price Industries to make and maintain drawings such as Exhibit [13]. I recall seeing Exhibit [13] on or around March 20, 1982.^[44]

The board held that the declaration did not corroborate Exhibit 13 because Ms. Price did "not attribute the drawing to the applicant Price . . ."^[45] (i.e., there was only Mr. Price's testimony that the drawing reflected his conception of the invention) or "indicate that she had any understanding of its content . . ."^[46] (i.e., Ms. Price had no basis for believing that the drawing was unchanged from the time that she saw it "on or around March 20, 1982" to the time that it was introduced into evidence).

However, the court reversed the board's holding on corroboration,^[47] reasoning that:

The board erred in its understanding that what a drawing discloses invariably needs to be supported by corroborating evidence. ***

Exhibit 13 is [sic; was] before the board for the board to make its own determination as to what this piece of evidence discloses.^[48]

Moreover:

Only the inventor's testimony requires corroboration before it can be considered. * * * While evidence as to what the drawing would mean to one of skill in the art may assist the board in evaluating the drawing, the content of Exhibit 13 does not itself require corroboration.^[49]

Comment: If the court really meant to say that an inventor's writing that allegedly dates from the time of his alleged inventive acts does not have to be corroborated, but only the testimony that the inventor gives during the interference itself, that will work a major change in interference law. Moreover, even if the court only meant that the existence of a writing as of a given date can be corroborated by one who has not been shown capable of understanding the writing (and therefore has no way of knowing whether the writing has been modified between the time that he or she saw it and the time that it is offered into evidence), that too will work quite a change in interference law. For one thing, it will mean that the standard advice that getting a laboratory notebook witnessed by someone on the night cleaning crew is inadequate corroboration is now obsolete!

However, it should be borne in mind that, even if the court does eventually do away with the mandatory corroboration requirement altogether, such things as the relationship between a corroborating witness and the inventor and the corroborating witness's ability to understand the evidence that he or she is corroborating will still go to the weight that the board should give to the corroborating witness's testimony. As the court said in this case:

The board did not reject . . . [Ms. Price's] testimony for lack of credibility but for lack of sufficiency. Secretary Price's affidavit, if believed, corroborates that Exhibit 13 was prepared before Symsek's date of conceptional.^[50]

Thus, it will apparently still be open to the board on remand to say that, apart from the requirement for corroboration, it simply does not believe that the party Price established with Ms. Price's affidavit that Exhibit 13 existed in the form in which it was offered into evidence prior to the party Symsek's date of conception.

E. An Interferent's Claims Can Be Unpatentable Under 35 USC 102(e) Over a Patent That Matured From a Parent of Its Opponent's Application in Interference

In Davis v. Loesch, 998 F.2d 963, 27 USPQ2d 1440 (Fed. Cir. 1993) (opinion delivered by Circuit Judge Schall for a panel that also consisted of Circuit Judge Plager and Senior District Judge Curtin), the court affirmed a holding that the party Davis's claims designated as corresponding to the count were unpatentable under 35 USC 102(e) as anticipated by or under 35 USC 102(e)/103 as obvious over a patent not involved in the interference that had matured from the parent of the party Loesch's application in interference. The relevant dates were as follows:

The Party Loesch	The Party Davis
March 31, 1980: parent application filed.
	July 16, 1983: application filed.
	December 20, 1983: patent in interference issued.
March 14, 1984: continuation application (the application in interference) filed.
March 27, 1987: patent issued on parent application.

The interference was between the party Loesch's continuation application and the party Davis's patent (and an application to reissue the party Davis's patent); the party Loesch's patent was not involved in the interference. ^[51]

In the declaration of the interference, the party Loesch was given the benefit of the filing date of its parent application, which made it the senior party. The party Davis filed a 37 CFR 1.633(g) motion attacking the party Loesch's entitlement to the benefit of the filing date of its parent application, but, curiously, it did not file a 37 CFR 1.633(a) motion attacking the patentability of any of the party Loesch's claims on the ground that they were not supported by the party Loesch's application in interference.^[52] For its part, the party Loesch filed a 37 CFR 1.633(a) motion for a judgment that the party Davis's claims designated as corresponding to the count were either anticipated by or unpatentable over the party Loesch's patent, which of course was a 35 USC 102(e) reference against the party Davis's claims. The party Davis made no attempt to antedate the party Loesch's patent. Instead it argued that its claims were patentable over the party Loesch's patent. In addition, it filed a 37 CFR 1.633(c) (4) motion^[53] for a judgment that its claims 43-55 were patentably distinct from the count -- i.e., that it was entitled to those claims even if the party Loesch obtained a judgment of priority as to the count.

The party Davis lost as to every issue.

As to the priority issue, the examiner-in-chief held that the party Loesch was entitled to the benefit of the filing date of its parent application. Since the party Davis's preliminary statement did not allege an invention date before the party Loesch's priority date, that meant that the party Davis was placed under a 37 CFR 1.640(d) order to show cause why judgment should not be entered against it.^[54] The parties' disclosures were quite different, and the party Davis argued that the count did not read on the disclosure of the party Loesch's priority application. However, the broad language of the count had originated as broad language in the party Davis's claim 1. The board accordingly entered judgment against the party Davis at final hearing, and the court affirmed the board, applying the familiar maxim that, "when an applicant selects language which is somewhat broad in scope, he takes the risk that others with specifically different structures may be able to meet the language selected. . . ."^[55]

The examiner-in-chief also denied the party Davis's 37 CFR 1.633(c) (4) motion, the board affirmed the examiner-in-chief, and the court at least impliedly affirmed the board. The reason that I say that the court "at least impliedly affirmed the board" on this issue is that the court's opinion does not discuss this issue separately, and it is arguable that the court did not realize that it was a separate issue from the question of whether those claims were patentable over the Loesch patent. However, the board had so held, and the court's opinion concludes that "we affirm the decision of the Board."^[56]

Finally, the examiner-in-chief held that all of the party Davis's claims designated as corresponding to the count were unpatentable over the Loesch patent, the board affirmed the examiner-in-chief, and the court affirmed the board, using some amazing logic. According to the court:

The Board's finding of anticipation [of the party Davis's claims 1, 4, 5, 41, 42, 50, 53, and 54] was dictated by its determination that the Loesch patent sufficiently discloses all elements of the interference count, to which the referenced claims correspond.^[57]

The reason that this logic is amazing is that, although the fact that the Loesch patent disclosed subject matter within the scope of the count meant that it disclosed subject matter within the scope of the party Davis's claim 1 (which was identical to the count), it did not necessarily mean that the Loesch patent disclosed subject matter within the scope of the party Davis's claims 4, 5, 41, 42, 50, 53, and 54!^[58] Moreover, the court did not rely on the all-claims-designated-as-corresponding-to-a-count-anticipated-by-the-prior-art stand-or-fall-together rationale of In re Van Geuns.^[59] Instead, it seems to have simply failed to appreciate that the party Davis's claims 4, 5, 41, 42, 50, 53, and 54 recite different subject matter than the count!

III. Interference Procedure

A. Once the Examiner-In-Chief Grants a Motion for the Benefit of the Filing Date of a Priority Application, the Movant Has No Further Burden to Prove By Extrinsic Evidence that Its Priority Application Is Enabling

In Fiers v. Sugano, 984 F.2d 1164, 25 USPQ2d 1601 (Fed. Cir. 1993) (opinion delivered by Circuit Judge Lourie for a panel that also consisted of Circuit Judge Michel and Senior Circuit Judge Cowen), the party Sugano et al. sought and obtained the benefit of the filing date of its Japanese priority application by way of a motion filed during the motions period.^[60] The motion for benefit was accompanied by a certified translation of the party Sugano's priority application, but, as is usually the case, it was not accompanied by an evidentiary declaration. Both of the other parties in this three party interference opposed the party Sugano et al.'s motion,^[61] but neither of them filed an evidentiary declaration in opposition to the motion. During the testimony period, none of the parties offered testimony on the issue of the party Sugano's entitlement to its priority date,^[62] and neither Mr. Sugano nor either of his co-inventors testified.

At final hearing, the board held that the parties Fiers and Revel et al. had failed to persuade it that the primary examiner's decision^[63] on the motion for benefit was erroneous.^[64] On appeal, the party Fiers:

argue[d] that Sugano failed to prove that his application is enabling because he did not produce extrinsic evidence showing enablement. Fiers also argue[d] that the Board erroneously imposed a burden on him to show that Sugano's application is not enabling when, in fact, Fiers had no right to submit rebuttal evidence once Sugano elected to rely solely on his Japanese application.^[65]

However, the Federal Circuit rejected both arguments, reasoning as follows:

"[A][U.S.] specification disclosure which contains a teaching of the manner and process of making and using the invention in terms which correspond in scope to those used in describing and defining the subject matter sought to be patented must be taken as in compliance with the enabling requirement of the first paragraph of § 112 unless there is reason to doubt the objective truth of the statements contained therein which must be relied on for enabling support." In re Marzocchi, 439 F.2d 220, 223, 169 USPQ2d 367, 369 (CCPA 1971). "[A]ny party making the assertion that a U.S. patent specification or claims fails, for one reason or another, to comply with § 112 bears the burden of persuasion in showing said lack of compliance." Weil v. Fritz, 601 F.2d. 551, 555, 202 USPQ 447, 450 (CCPA 1979). Thus, o