984 F.2d 1164 (Fed. Cir. 1993), 92-1170, Fiers v. Revel

Docket Nº92-1170, 92-1171.
Citation984 F.2d 1164
Party Name25 U.S.P.Q.2d 1601 Walter C. FIERS, Appellant, v. Michel REVEL and Pierre Tiollais, Appellants, v. Haruo SUGANO, Masami Muramatsu and Tadatsugu Taniguchi, Appellees.
Case DateJanuary 19, 1993
CourtUnited States Courts of Appeals, Court of Appeals for the Federal Circuit

Page 1164

984 F.2d 1164 (Fed. Cir. 1993)

25 U.S.P.Q.2d 1601

Walter C. FIERS, Appellant,

v.

Michel REVEL and Pierre Tiollais, Appellants,

v.

Haruo SUGANO, Masami Muramatsu and Tadatsugu Taniguchi, Appellees.

Nos. 92-1170, 92-1171.

United States Court of Appeals, Federal Circuit

January 19, 1993

Page 1165

[Copyrighted Material Omitted]

Page 1166

David J. Lee, Fish & Neave, New York City, argued for appellant. With him on the brief were James F. Haley, Jr. and Ivor R. Elrifi. Roger L. Browdy, Browdy & Neimark, Washington, DC, argued for appellants.

Nels T. Lippert, White & Case, New York City, argued for appellees.

Before MICHEL, Circuit Judge, COWEN, Senior Circuit Judge, and LOURIE, Circuit Judge.

LOURIE, Circuit Judge.

Walter C. Fiers, Michel Revel, and Pierre Tiollais appeal from the June 5, 1991 decision of the Patent and Trademark Office Board of Patent Appeals and Interferences, awarding priority of invention in a three-way interference proceeding, No. 101,096, to Haruo Sugano, Masami Muramatsu, and Tadatsugu Taniguchi (Sugano). We affirm.

BACKGROUND

This interference among three foreign inventive entities relates to the DNA 1 which codes for human fibroblast beta-interferon (J-IF), a protein that promotes viral resistance in human tissue. It involves a single count which reads:

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

Page 1167

The parties filed U.S. patent applications as follows: Sugano on October 27, 1980, Fiers on April 3, 1981, and Revel and Tiollais (Revel) on September 28, 1982. 2 Sugano claimed the benefit of his March 19, 1980 Japanese filing date, Revel claimed the benefit of his November 21, 1979 Israeli filing date, and Fiers sought to establish priority under 35 U.S.C. § 102(g) based on prior conception coupled with diligence up to his British filing date on April 3, 1980. 3

Sugano's Japanese application disclosed the complete nucleotide sequence of a DNA coding for J-IF and a method for isolating that DNA. 4 Revel's Israeli application disclosed a method for isolating a fragment of the DNA coding for J-IF as well as a method for isolating messenger RNA (mRNA) coding for J-IF, but did not disclose a complete DNA sequence coding for J-IF. 5 Fiers, who was working abroad, based his case for priority on an alleged conception either in September 1979 or in January 1980, when his ideas were brought into the United States, coupled with diligence toward a constructive reduction to practice on April 3, 1980, when he filed a British application disclosing the complete nucleotide sequence of a DNA coding for J-IF. According to Fiers, his conception of the DNA of the count occurred when two American scientists, Walter Gilbert and Phillip Sharp, to whom he revealed outside of the United States a proposed method for isolating DNA coding for J-IF brought the protocol back to the United States. 6 Fiers submitted affidavits from Gilbert and Sharp averring that, based on Fiers' proposed protocol, one of ordinary skill in the art would have been able to isolate J-IF DNA without undue experimentation. 7 On February 26, 1980, Fiers' patent attorney brought into the United States a draft patent application disclosing Fiers' method, but not the nucleotide sequence for the DNA.

The Board awarded priority of invention to Sugano, concluding that (1) Sugano was entitled to the benefit of his March 19, 1980

Page 1168

Japanese filing date, 8 (2) Fiers was entitled to the benefit of his April 3, 1980 British filing date, but did not prove conception of the DNA of the count prior to that date, and (3) Revel was not entitled to the benefit of his November 21, 1979 Israeli filing date. The Board based its conclusions on the disclosure or failure to disclose the complete nucleotide sequence of a DNA coding for J-IF.

DISCUSSION

Fiers' Case for Priority

The Board held that Fiers failed to establish conception in the United States prior to his April 3, 1980 British filing date. Specifically, the Board determined that Fiers' disclosure of a method for isolating the DNA of the count, along with expert testimony that his method would have enabled one of ordinary skill in the art to produce that DNA, did not establish conception, since "success was not assured or certain until the [J-IF] gene was in fact isolated and its sequence known." The Board relied on our opinion in Amgen Inc. v. Chugai Pharmaceutical Co., 927 F.2d 1200, 18 USPQ2d 1016 (Fed.Cir.1991), in which we addressed the requirements necessary to establish conception of a purified DNA sequence coding for a specific protein. Accordingly, the Board held that Fiers was entitled only to the benefit of his April 3, 1980 British application date because only that application disclosed the complete nucleotide sequence of the DNA coding for J-IF. That date was subsequent to Sugano's March 1980 Japanese priority date.

Fiers argues that the Board erroneously determined that Amgen controls this case. According to Fiers, the Board incorrectly interpreted Amgen as establishing a rule that a DNA coding for a protein cannot be conceived until one knows the nucleotide sequence of that DNA. Fiers argues that this court decided Amgen on its particular facts and that this case is distinguishable. Fiers' position is that we intended to limit Amgen to cases in which isolation of a DNA was attended by serious difficulties such as those confronting the scientists searching for the DNA coding for erythropoietin (EPO), e.g., screening a genomic DNA library with fully degenerate probes. According to Fiers, his method could have been easily carried out by one of ordinary skill in the art. 9 Fiers also argues that Amgen held that a conception of a DNA can occur if one defines it by its method of preparation. Fiers suggests that the standard for proving conception of a DNA by its method of preparation is essentially the same as that for proving that the method is enabling. Fiers thus urges us to conclude that since his method was enabling for the DNA of the count, he conceived it in the United States when Gilbert and Sharp entered the country with the knowledge of, and detailed notes concerning, Fiers' process for obtaining it.

Conception is a question of law that we review de novo. Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 231 USPQ 81, 87 (Fed.Cir.1986) (citing Barmag Barmer Maschinenfabrik AG v. Murata...

To continue reading

Request your trial
103 practice notes
  • Patents: Patent application examination— Written description requirement; guidelines; comment request,
    • United States
    • Federal Register December 21, 1999
    • December 16, 1999
    ...comment criticized the Guidelines for failing to acknowledge the ``safe harbor'' product-by-process type claim noted in Fiers v. Revel, 984 F.2d 1164, 25 USPQ2d 1601 (Fed. Cir. 1993), and Amgen Inc. v. Chugai Pharmaceutical Co., 927 F.2d 1200, 18 USPQ2d 1016 (Fed. Cir. 1991). One comment ob......
  • Reports and guidance documents; availability, etc.: Written description requirement; examination guidelines,
    • United States
    • Federal Register January 05, 2001
    • December 29, 2000
    ...has identified as the ``essential distinguishing characteristics'' of the invention should be understood in terms of Fiers v. Revel, 984 F.2d 1164, 1169, 25 USPQ2d 1601, 1605 (Fed. Cir. 1993) (``Conception of a substance claimed per se without reference to a process requires conception of i......
  • Supplementary Examination Guidelines:
    • United States
    • Federal Register February 09, 2011
    • January 21, 2011
    ...did not satisfy the written description requirement because it failed to support the scope of the genus claimed); Fiers v. Revel, 984 F.2d 1164, 1170 (Fed. Cir. 1993) (rejecting the argument that ``only similar language in the specification or original claims is necessary to satisfy the wri......
  • 445 F.Supp.2d 531 (M.D.N.C. 2006), 1 97CV1138, Rhone-Poulenc Agro, S.A. v. Monsanto Co.
    • United States
    • August 7, 2006
    ...corn.... Actual reduction to practice is viewed as the completion of the conception of the invention (Fiers v. Revel, 25 USPQ2d 1601, 984 F.2d 1164 (Fed.Cir.1993)). (Pros. Hist. '798 Patent at 804 (emphasis added).) As is evident from this statement, the patent examiner put great weight in ......
  • Request a trial to view additional results
76 cases
  • 445 F.Supp.2d 531 (M.D.N.C. 2006), 1 97CV1138, Rhone-Poulenc Agro, S.A. v. Monsanto Co.
    • United States
    • August 7, 2006
    ...corn.... Actual reduction to practice is viewed as the completion of the conception of the invention (Fiers v. Revel, 25 USPQ2d 1601, 984 F.2d 1164 (Fed.Cir.1993)). (Pros. Hist. '798 Patent at 804 (emphasis added).) As is evident from this statement, the patent examiner put great weight in ......
  • 989 F.Supp. 359 (D.Mass. 1997), C. A. 96-11090, Genentech, Inc. v. Boehringer Mannheim GmbH
    • United States
    • Federal Cases United States District Courts 1st Circuit District of Massachusetts
    • December 30, 1997
    ...that encode the proteins within the scope of the functional definition. Id. at 1565 n. 25 (emphasis added); see also Fiers v. Revel, 984 F.2d 1164, 1171 (Fed.Cir. 1993). The court in Wellcome, however, was not construing the claims in Genentech's '225 patent, which is the limited purpose of......
  • 175 F.Supp.2d 246 (D.Conn. 2001), 396CV2015, Plant Genetic Systems v. DeKalb Genetics Corp.
    • United States
    • Federal Cases United States District Courts 2nd Circuit District of Connecticut
    • September 7, 2001
    ...of non dicotyledonous plant cells. See Enzo Biochem Inc. v. Calgene Inc., 188 F.3d 1362, 1370 (Fed.Cir. 1999), citing Fiers v. Revel, 984 F.2d 1164, 1171 (Fed.Cir. 1993). What is "glaringly missing" from the specification is the disclosure of how the idea of stably integrating het......
  • Pernix Ireland Pain DAC v. Alvogen Malta Operations Ltd., 082418 DEDC, C. A. 16-139-WCB
    • United States
    • Federal Cases United States District Courts 3th Circuit District of Delaware
    • August 24, 2018
    ...patent claims on that ground would permit a patentee to “attempt to preempt the future before it has arrived, ” Fiers v. Revel, 984 F.2d 1164, 1171 (Fed. Cir. 1993), and then be rewarded in that effort if the challenger cannot point out exactly how the future will W......
  • Request a trial to view additional results
8 firm's commentaries
  • Sanofi-Aventis v. Pfizer Inc. (Fed. Cir. 2013)
    • United States
    • JD Supra United States
    • November 15, 2013
    ...In support of its argument, Sanofi pointed to Amgen Inc. v Chugai Pharmaceutical Co., 927 F.2d 1200 (Fed. Cir. 1991), Fiers v. Revel, 984 F.2d 1164 (Fed. Cir. 1993), and Burroughs Wellcome Co. v. Barr Laboratories, Inc., 40 F.3d 1223 (Fed. Cir. In affirming the Board's award of priority to ......
  • Written Description - A Must Or Not?
    • United States
    • Mondaq United States
    • December 21, 2004
    ...Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 736 (2002) [xxv] Id. at 1890 [xxvi] Rochester cited Fiers v. Revel, 984 F.2d 1164 (Fed. Cir. 1993), Eli Lilly & Co. v. Barr Laboratories, Inc., 251 F.3d 955 (Fed. Cir. 2001) and Enzo, 323 F.3d 956 (Fed. Cir. 2002) [xxvii......
  • Conception And Reduction To Practice Of A DNA May Be Established Without The Full And Correct Nucleotide Sequence
    • United States
    • Mondaq United States
    • January 2, 2014
    ...reading of Federal Circuit precedent, including Amgen Inc. v. Chugai Pharmaceutical Co., 927 F.2d 1200 (Fed. Cir. 1991); Fiers v. Revel, 984 F.2d 1164 (Fed. Cir. 1993); and Burroughs Wellcome Co. v. Barr Laboratories, Inc., 40 F.3d 1223 (Fed. Cir. 1994). According to the Board, in this prec......
  • Who Is The Inventor? The Art Of Determining Conception Of An Idea
    • United States
    • Mondaq United States
    • September 25, 2018
    ...2000). 2 See U.S. Constitution Art. I §8 3 See 35 U.S.C. §100(f) (emphasis added). 4 35 U.S.C. §154(a)(1). 5 See e.g., Fiers v. Revel, 984 F.2d 1164, 1168 (Fed. Cir. 1993). 6 See e.g., Board of Education ex rel. Board of Trustees of Florida State Univ. v. American Bioscience Inc., 333 F.3d ......
  • Request a trial to view additional results
14 books & journal articles
  • Inherency.
    • United States
    • William and Mary Law Review Vol. 47 Nbr. 2, November 2005
    • November 1, 2005
    ...Corp. of Am. v. Banner, 778 F.2d 775, 781-82 (Fed. Cir. 1985). (111.) 35 U.S.C. [section] 112 para. 1 (2000). (112.) Fiers v. Revel, 984 F.2d 1164, 1171 (Fed. Cir. 1993). (113.) 835 F.2d 1419 (Fed. Cir. 1987). (114.) Id. at 1420. (115.) Id. at 1423. (116.) 44 F.3d 988 (Fed. Cir. 1995). (117......
  • Reconsidering estoppel: patent administration and the failure of Festo.
    • United States
    • University of Pennsylvania Law Review Vol. 151 Nbr. 1, November 2002
    • November 1, 2002
    ...Cir. 1997) (invalidating potentially enabled claims because the disclosure did not precisely describe them); see also Fiers v. Revel, 984 F.2d 1164, 1169-70 (Fed. Cir. 1993) (considering the relationship between disclosure and claims); Amgen, Inc. v. Chugai Pharma. Co., 927 F.2d 1200, 1213-......
  • What is the "invention"?
    • United States
    • William and Mary Law Review Vol. 53 Nbr. 6, May 2012
    • May 1, 2012
    ...Co., 119 F.3d 1559, 1566-67 (Fed. Cir. 1997) (explaining what would satisfy an adequate written description of a DNA); Fiers v. Revel, 984 F.2d 1164, 1170-71 (Fed. Cir. 1993) (same). (77.) Holbrook, supra note 66, at 795 (noting the disagreement over whether there is an independent written ......
  • Reinvention.
    • United States
    • Notre Dame Law Review Vol. 92 Nbr. 3, January 2017
    • January 1, 2017
    ...chemical context, the question is whether the compound at issue was specifically disclosed by name or chemical structure. Fiers v. Revel, 984 F.2d 1164, 1171 (Fed. Cir. 1993). Since X is specifically described in the expired patent, the written description requirement is met. (135) See Timo......
  • Request a trial to view additional results
5 provisions
  • Patents: Patent application examination— Written description requirement; guidelines; comment request,
    • United States
    • Federal Register December 21, 1999
    • December 16, 1999
    ...comment criticized the Guidelines for failing to acknowledge the ``safe harbor'' product-by-process type claim noted in Fiers v. Revel, 984 F.2d 1164, 25 USPQ2d 1601 (Fed. Cir. 1993), and Amgen Inc. v. Chugai Pharmaceutical Co., 927 F.2d 1200, 18 USPQ2d 1016 (Fed. Cir. 1991). One comment ob......
  • Reports and guidance documents; availability, etc.: Written description requirement; examination guidelines,
    • United States
    • Federal Register January 05, 2001
    • December 29, 2000
    ...has identified as the ``essential distinguishing characteristics'' of the invention should be understood in terms of Fiers v. Revel, 984 F.2d 1164, 1169, 25 USPQ2d 1601, 1605 (Fed. Cir. 1993) (``Conception of a substance claimed per se without reference to a process requires conception of i......
  • Supplementary Examination Guidelines:
    • United States
    • Federal Register February 09, 2011
    • January 21, 2011
    ...did not satisfy the written description requirement because it failed to support the scope of the genus claimed); Fiers v. Revel, 984 F.2d 1164, 1170 (Fed. Cir. 1993) (rejecting the argument that ``only similar language in the specification or original claims is necessary to satisfy the wri......
  • Patents: Biotechnological applications; written description requirement; guidelines; comment request,
    • United States
    • Federal Register June 15, 1998
    • June 9, 1998
    ...requirement, must be thoroughly analyzed and discussed in the Office action. Endnotes 119 F.3d 1559, 43 USPQ2d 1398 (Fed. Cir. 1997). 984 F.2d 1164, 25 USPQ2d 1601 (Fed. Cir. 927 F.2d 1200, 18 USPQ2d 1016 (Fed. Cir. 1991). E.g., Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1560, 19 USPQ2d 111......
  • Request a trial to view additional results