Federal Circuit Declines to Adopt Per Se Rules for Evidence of Conception and Reduction to Practice.

The U.S. Court of Appeals for the Federal Circuit declined to adopt a rule that a research proposal is not evidence of conception or that evidence of diligence must be excluded if there is any possibility that the evidence could be construed to support an invention beyond the reach of an interference count. In re Jolley, Case No. 01-1646 (Fed. Cir., October 29, 2002).

Senior party Jolley appealed from a decision of the U.S. Board of Patent Appeals and Interferences (Board) awarding priority to junior party McGraw in a five-way interference. The interference count was directed to a liquid composition comprising a hydrofluorocarbon refrigerant (HFC) and a soluble organic lubricant comprising an effective amount of an ester. The Board determined that McGraw had an earlier conception date than Jolley based on an e-mail from McGraw's co-inventor, Ward. Even though Jolley was found to have reduced his invention to practice earlier than McGraw, the Board determined that McGraw was entitled to the priority award based on his prior conception coupled with diligence.

In the e-mail, Ward suggested the possibility of using blends of polyglycols with esters as lubricants for HFC, a suggestion consistent with research for air compressor lubricants, which were polyglycol/ester blends. Jolley argued that initial conception by McGraw was not directed to a two component system (HFC and ester) as in the interference count, but to a three component system (HFC, polyglycol and ester).

The Court held that although the evidence of conception was to overlapping inventions (i.e., evidence of an invention within the count and an invention outside the count), since the count uses the term "comprising," it is open to other ingredients, such as a polyglycol. The Court noted that "the question of whether an alleged conception discloses the subject matter of the interference count with sufficient particularity is a fact-intensive inquiry, based on whether the evidence of conception fairly suggests to one of ordinary skill in the subject matter of the count, without the need for extensive experimentation to ascertain whether the matter encompassed by the disclosure suggests the desirable features of compositions belonging to the count."

The Court dismissed Jolley's argument discounting the e-mail as a "research proposal," stating that "the conception inquiry is fact-intensive and no per se rule excludes 'research proposals' as evidence of conception." According to the Court "the determinative inquiry is not whether McGraw's disclosure was phrased certainly or tentatively, but whether the idea expressed therein was sufficiently developed to support conception of the subject matter of the interference count. While the e-mail generally referred to "ester" in general terms, it also referenced the polyglycol/ester blends found in certain air compressor lubricant patents. The Court found this reference to be of sufficient specificity to support the Board's finding of a conception.

The evidence also showed that McGraw reduced to practice a two component system (refrigerant and ester) meeting all of the limitations of the count and then reduced to practice a three component system (refrigerant, ester and polyglycol). Jolley argued that the Board cannot make a determination of diligence based on evidence that includes an invention inside the count, i.e., the two component system, and an invention outside the count, i.e., the three component system.

The Court declined to adopt a rule that evidence of diligence must be excluded if there is any possibility that it could be construed in support of an invention beyond the reach of the count: "Where two different, inconsistent conclusions may reasonably be drawn from the evidence in record, an agency's decision to favor one conclusion over the other is the epitome of an decision that must be sustained upon review for substantial evidence."

The content of this article does not constitute legal advice and should not be relied on in that way. Specific advice should be sought about your specific circumstances.

Mr Cameron Weiffenbach

McDermott, Will & Emery 

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Washington, DC

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UNITED STATES 

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