Federal Circuit: Foreign Application Not Priority in Interference When it Only “Envisions” Invention

By Gene Quinn
September 13, 2010

Last week the United States Court of Appeals for the Federal Circuit issued a ruling in Goeddel v. Sugano, which might be one of a dying breed should patent reform actually pass.  The case dealt with an appeal from an interference proceeding where the Board awarded priority based on a Japanese application.  The Federal Circuit, per Judge Newman, explained that it was inappropriate to say that the Japanese application demonstrated a constructive reduction to practice because the application merely would allow the skilled reader to “envision” the invention covered in the interference count.  If patent reform passes (and yes that could really happen) cases like Goeddel would become a thing of the past, although priority determinations like this one in Goeddel will certainly not go away.

Goeddel was a consolidated appeal from two decisions of the Board of Patent Appeals and Interferences of the United States Patent and Trademark Office in two related patent interference priority contests between the party Haruo Sugano, Masami Muramatsu, and Tadatsugu Taniguchi (together “Sugano”) and the party David V. Goeddel and Roberto Crea (together “Goeddel”).  The Board held that Sugano is entitled to the benefit of the filing date of its initial Japanese application, and awarded Sugano priority as to the counts of both interferences.

In the patents and patent applications involved in the interference proceedings, the parties describe and claim a recombinant DNA process for directly producing mature hFIF. Through this process the naturally occurring gene is modified, and the modified gene is inserted into a bacterium under conditions whereby the bacterium produces the desired mature hFIF without the presequence of the precursor hFIF. The question of priority turned on whether Sugano’s initial Japanese Patent Application No. 33931/80 constitutes a constructive reduction to practice of the invention set forth in the Interference Counts. This was the central question because Sugano’s initial Japanese Application predated Goeddel’s priority date.

The Board held that Sugano’s Japanese Application constituted constructive reduction to practice of the subject matter of the counts of both interferences, and awarded priority to Sugano. Goeddel argued that the Japanese Application does not meet the written description and enablement requirements of 35 U.S.C. §112 with respect to the interference counts, and therefore is not a constructive reduction to practice of the counts. Goeddel pointed out that the Japanese Application “is devoid of any disclosure of a method of making the claimed subject matter,” and that the plasmids described in the Japanese Application “would not function to express mature hFIF,” as Sugano conceded. The Board, however, ruled in favor of Sugano. Judge Newman summarized the Board’s holding as follows:

Accordingly, the Board held that a person of skill in the field of the invention, reading the Japanese Application, would conclude that Sugano was in possession of the invention of the interference counts.

Thus, the Board was convinced that because persons experienced in this field would have known how to modify the precursor hFIF gene so that it would express mature hFIF using the teachings in the Japanese Application, there was sufficient possession of the invention to award priority in the interference proceeding. On appeal to the Federal Circuit the question was essentially whether a disclosure that would be “readily apparent” to a person skilled in this field, in view of the Japanese Application’s description, amounts to a constructive reduction.

On appeal Sugano did not dispute that the Japanese Application did not explicitly show a DNA encoding mature hFIF or suggest using such DNA to encode mature hFIF without the presequence. Instead, Sugano argued that it is unnecessary for the Japanese Application to describe explicitly the amino acid sequence of mature hFIF or suggest obtaining mature hFIF. Sugano argued that patent applications are written for a person of skill in the art, and such a person comes to the patent with the knowledge of what has come before, and thus it is unnecessary to spell out every detail of the invention in the specification, citing Lizard Tech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005). Sugano went on to conclude that it is, therefore, sufficient that the Japanese Application conveyed mature hFIF with “reasonable clarity” to a person of skill in the art, citing Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991) for this “reasonable clarity” standard.

Sugano also argued that such a ruling was supported by Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 968 (Fed. Cir. 2002) and University of Rochester v. G.D. Searle & Co., 358 F.3d 916, 923 (Fed. Cir. 2004), but Judge Newman pointed out that those cases do not hold that envisioning an invention not yet made is a constructive reduction to practice of that invention. Newman explained that in Enzo Biochem the court confirmed that depositing an actual sample may meet the written description requirement when science is not capable of a complete written description. In University of Rochester the court held that the description of the COX-2 enzyme did not also serve to describe all unknown compounds capable of inhibiting the enzyme.  She also explained that precedent in evolving sciences, while attuned to the state of the science, remains bound by the requirement of showing “that the inventor actually invented the invention claimed,”  citing Bradford Co. v. Conteyor North Am., Inc., 603 F.3d 1262, 1269 (Fed. Cir. 2010).

The Federal Circuit, per Judge Newman with Judges Lourie and Bryson joining, ultimately determined that the Board erred in ruling that priority is established if a person of skill in the art could “envision” the invention of the counts in an interference proceeding. The holding:

While The Board’s decision that the Japanese Application constitutes constructive reduction to practice of the subject matter of these interferences is not in accordance with law, for the Japanese Application does not meet the criteria of §112, first paragraph, as to this subject matter.  The award of priority to Sugano is reversed.  The cases are remanded for appropriate further proceedings.

So in order for an application to be useful as a priority document it must do more than allow the skilled reader to “envision” the invention. There must actually be possession of the invention in order for their to be a constructive reduction to practice. A highly sensible decision.

Notwithstanding, allow me to point out that this type of case may soon be a thing of the past. I am hearing from several sources that patent reform is alive and well and could actually happen soon. In my interview with Todd Dickinson he said that he does not think it is dead and sees a path forward to enacting patent reform, and he ought to know given how the AIPLA has followed patent reform efforts. Other sources that I deem highly reliable are also telling me about a potential compromise that would keep the first to file provisions but which would also modify the grace period provisions to allow the current 12 month grace period as is. That would remove the objections from the small business and independent inventor communities, and would lead to patent laws that do away with interference proceedings but retain a full and fair 12 month grace period.  That could, perhaps even should, seal the deal on patent reform.  The plot thickens!

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

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Discuss this

There are currently 4 Comments comments.

  1. staff September 14, 2010 10:27 am

    “…compromise that would keep the first to file provisions but which would also modify the grace period provisions to allow the current 12 month grace period as is. That would remove the objections from the small business and independent inventor communities…”

    That is incorrect. Inventors have many other objections.

  2. Steve September 14, 2010 7:28 pm

    “… would lead to patent laws that do away with interference proceedings …”

    Gene–why would this be the case?

    And wouldn’t interference still be necessary to ascertain whether or not there was 112 spec support for (the) identical (added) claims?

  3. Gene Quinn September 15, 2010 10:39 am

    Steve-

    You are correct to identify that a proceeding would still be necessary to ascertain whether there is support for a specification, but that would not be an interference proceeding.

    What I think will happen is this. A files an application first but it is not enabled or otherwise is missing critical information. B files an application second. Because B is second B would lose under the first to file doctrine and receive a rejection. B would then have to respond to that rejection to explain that it is not prior art for what the examiner claims because it does not disclose Z. So rather than interference proceedings it seems like this argument will play out in a great many prosecutions. It also could lead to the strange case where more than one person obtains a claim on the same invention.

    Folks have said this won’t happen because it hasn’t happened anywhere else that has first to file, which is everywhere else. However, the US has the most onerous disclosure requirements, so the international/foreign experience is not particularly illuminating with respect to what will likely happen as a result of 112 first paragraph.

    -Gene

  4. Steve September 15, 2010 8:30 pm

    Thanks Gene.

    Boy, I see real problems in this area.

    Your scenario presumes the examiner is 1. able to locate; and 2. decides to use; such a reference if found. From my admittedly limited experience and time in the patent world, this is a big assumption. I suspect–like you–that there will actually be a fair number of patents issuing with at least some either identical, near-identical, or patently indistinct (and certainly in any case at least clearly obvious) claims.

    And what happens when an inventor amends to include identical claims from an issued patent in the spec and notifies the office they’ve done such? How would priority be established w/out an interference? Are you thinking that the examiner of the “still-in-prosecution” app would make the call (almost guaranteeing an appeal by the losing party to . . . who? BPAI? A district court? CAFC? ).

    As an at least somewhat related aside, I asked an examiner a few years back what happens when an app which was not published issues . . . after another patent’s been issued . . . on the same invention (whether or not this one was published). He explained that yes–you would/do end up with patents on the same invention; since examiners aren’t allowed to use non-published apps.

    This seems illogical to me. Do you know why this is the case? Shouldn’t examiners have access to all the prior art possible; especially when it’s “sitting” there at the office?

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