Bosies v. Benedict

• Decision Date: 25 May 1994
• Docket Number: No. 93-1555,93-1555
• Citation: 27 F.3d 539,30 USPQ2d 1862
• Parties: Elmar BOSIES and Rudi Gall, Appellants, v. James J. BENEDICT and Christopher M. Perkins, Appellees.
• Court: U.S. Court of Appeals — Federal Circuit

Page 539

27 F.3d 539

30 U.S.P.Q.2d 1862

Elmar BOSIES and Rudi Gall, Appellants, v. James J. BENEDICT and Christopher M. Perkins, Appellees.

No. 93-1555.

United States Court of Appeals, Federal Circuit.

May 25, 1994.

Norman D. Hanson, Felfe & Lynch, New York City, argued for appellants. With him on the brief were Peter F. Felfe and Andrew L. Tiajoloff.

David L. Sutter, The Proctor & Gamble Co., Miami Valley Laboratories, Cincinnati, OH, argued for appellees. With him on the brief were Joseph R. Papp, Michael P. Brennan and Eric M. Dobrusin, Harness, Dickey & Pierce, Troy, MI.

Before ARCHER, Chief Judge ^*, PLAGER, and LOURIE, Circuit Judges.

LOURIE, Circuit Judge.

Elmar Bosies and Rudi Gall (Bosies) appeal from the June 30, 1993 decision of the United States Patent and Trademark Office Board of Patent Appeals and Interferences awarding priority in Interference No. 102,399 to James J. Benedict and Christopher M. Perkins (Benedict). Because the board erred as a matter of law in concluding that Benedict proved conception of the subject matter of the counts prior to Bosies' effective filing date, we reverse.

BACKGROUND

This interference was declared on May 24, 1990 between an application of Benedict, Serial No. 06/806,155, assigned to Proctor and Gamble Company, and U.S. Patent 4,687,767 to Bosies, assigned to Boehringer Mannheim GmbH. Bosies, the senior party, was accorded the benefit of the August 2, 1984 filing date of his German patent application. Benedict was accorded the benefit of the December 21, 1984 filing date of his parent application.

The interfering subject matter relates to diphosphonate compounds, compositions, and methods for the treatment of calcium metabolism disorders. The three counts are respectively directed to the compounds, compositions, and methods. Count 1 is illustrative and reads as follows:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

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wherein

Het is a substituted or unsubstituted heterocyclic selected from the group consisting of imidazole, or pyridine, 1,2,4-[sic, triazole?] and wherein the substituents are selected from the group consisting of C1 -C4 alkyl, C1 -C4 alkoxy, halogen selected from the group consisting of fluorine, chlorine, bromine, iodine; hydroxyl, carboxyl, an amino group optionally substituted by C1 -C4 alkyl or alkanoyl with up to 6 carbon atoms; benzyl and benzyl substituted by C1 -C4 alkyl, nitro, amino or aminoalkyl with 1 to 4 carbon atoms,

A is a straight-chained [sic] or branched, saturated or unsaturated hydrocarbon chain containing 2 to 8 carbon atoms,

X is a hydrogen atom, hydroxy, or alkanoyl of up to 6 carbon atoms and R is a hydrogen atom or an alkyl of 1 to 4 carbon atoms; or a pharmacologically acceptable salt thereof.

(emphasis added). ¹

Bosies relied solely on his effective filing date of August 2, 1984 as a constructive reduction to practice of the subject matter of the counts. Benedict asserted conception of the subject matter of the counts prior to Bosies' effective filing date and diligence in thereafter reducing the invention to practice. See 35 U.S.C. Sec. 102(g) (1988). As junior party, Benedict bore the burden of proving prior conception and diligence. See Oka v. Youssefyeh, 849 F.2d 581, 584, 7 USPQ2d 1169, 1172 (Fed.Cir.1988).

Benedict's evidence of conception consisted of an entry from his laboratory notebook, dated June 30, 1983, in which he wrote that compounds of the following structure, among others, should be evaluated for bone resorption inhibition activity:

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The notebook entry disclosed that R could equal alkyl, aryl, or H. The encircled "P" indicated the phosphonate group. These values correspond to those specified in the counts. Benedict argued that because his generic formula encompassed the compounds of count 1, his conception constituted a conception of the invention of count 1.

Benedict's laboratory notebook entry, however, nowhere defined the value of the variable "n," which would indicate whether or not the compounds met the definition of "A" in count 1. The count specifically requires that "A" be a hydrocarbon chain containing from 2 to 8 carbon atoms. On this issue, Benedict did not submit the testimony of either inventor. Benedict's sole evidence pertaining to the meaning of "n" was an affidavit of Benedict's laboratory technician, Richard J. Sunberg, who witnessed the notebook entry. Sunberg testified that in witnessing the entry, Sunberg "considered 'n' to be a range of values, including n = 1 and n = 2." Benedict argued that the formula in Benedict's laboratory notebook, coupled with the testimony of Sunberg, established conception of at least one compound of count 1, a compound in which "A" contains two carbon atoms. Therefore, Benedict argued, he proved conception of the subject matter of the counts.

The board agreed, accepting Sunberg's testimony as sufficient proof of the meaning of "n" in Benedict's notebook entry and as evidence that Benedict proved the meaning of "A" in the formula of count 1. The board stated that Sunberg's testimony was reasonable because "use of the term 'n' in the formula signifies to those reading the formula that 'n' is more than 1 [and if] 'n' were meant only to be 1, then 1 would have been used instead of 'n.' " Slip op. at 8. The board thus concluded that Benedict conceived the subject matter of the counts prior to Bosies' effective filing date and further held that Benedict also established diligence. Accordingly, the board awarded judgment to Benedict.

DISCUSSION

Benedict argues that because its application was copending with that of Bosies, Benedict, as the junior party, was required to prove prior invention only by a preponderance of the evidence. Bosies asserts the standard of proof to be one of clear and convincing evidence. The board applied the preponderance of the evidence standard.

It is well settled that where an interference is between a patent that issued on an application that was copending with an interfering The board thus properly required Benedict to prove conception and diligence by a preponderance of the evidence, a standard which only requires the fact finder " 'to believe that the existence of a fact is more probable than its nonexistence before [he] may find in favor of the party who has the burden to persuade the [judge] of the fact's existence.' " In re Winship, 397 U.S. 358, 371-72, 90 S.Ct. 1068, 1076-77, 25 L.Ed.2d 368 (1970) (alterations in original) (Harlan, J., concurring). Having determined the proper burden of proof, we now address the merits.

                application, 2 the applicable standard of proof is preponderance of the evidence.  See Peeler v. Miller, 535 F.2d 647, 651 n. 5, 190 USPQ 117, 120 n. 5 (CCPA 1976);  Linkow v. Linkow, 517 F.2d 1370, 1373, 186 USPQ 223, 225 (CCPA 1975);  Frilette v. Kimberlin, 412 F.2d 1390, 1391, 162 USPQ 148, 149 (CCPA 1969), cert. denied, 396 U.S. 1002, 90 S.Ct. 550, 24 L.Ed.2d 493 (1970).  Bosies' reliance on Price v. Symsek, 988 F.2d 1187, 26 USPQ2d 1031 (Fed.Cir.1993), for the contrary proposition is inapposite, as that interference did not involve an application and a patent which before issuance had been copending with the application, but an application which was filed for purposes of provoking an interference after issuance of a patent.  The court held that under those facts the applicant was required to prove prior invention by clear and convincing evidence.  988 F.2d at 1194, 26 USPQ2d at 1033.   Moreover, Bosies' reliance on Amax Fly Ash Corp. v. United States, 514 F.2d 1041, 182 USPQ 210 (Ct.Cl.1975) is misplaced, as that case did not involve an interference between copending applications, but a patent infringement action in which the defendant was required to prove its invalidity defense of derivation by clear and convincing evidence.  514 F.2d at 1048, 182 USPQ at 215
                

Bosies argues that the board's determination that Benedict proved conception of the compounds of count 1 before August 2, 1984 was erroneous because Benedict failed to show that he described, and thereby conceived, a compound of count 1. Bosies asserts that Benedict's conception of a broad genus in which the value of "n" is undefined cannot constitute conception of the specific compounds of count 1 and that Sunberg's testimony is insufficient as a matter of law to establish the meaning of "n."

Conception is a question of law that we review de novo. Fiers v. Sugano, 984 F.2d 1164, 1168, 25 USPQ2d 1601, 1604 (Fed.Cir.1993). "[I]t is well established in our law that conception of a chemical compound requires that the inventor be able to define it so as to distinguish it from other materials, and to describe how to obtain it." Amgen, Inc. v. Chugai Pharmaceutical Co., 927 F.2d 1200, 1206, 18 USPQ2d 1016, 1021 (Fed.Cir.), cert. denied, --- U.S. ----, 112 S.Ct. 169, 116 L.Ed.2d 132 (1991). In order to establish conception, Benedict thus was required to submit evidence showing, inter alia, a description of the compounds of the count. See Oka, 849 F.2d at 583, 7 USPQ2d at 1171. Absent such a showing, Benedict's case for conception must fail. See Fiers, 984 F.2d at 1168-69, 25 USPQ2d at 1604-05.

In the instant case, count 1 is directed to a group of compounds in which "A" would, in the notebook formulation, correspond to "n" being two to eight. The formula disclosed, however, is a generic one that does not ascribe a value to "n" and thus does not specifically define any of the compounds to which count 1 is directed. Although the compounds of the count arguably might be within the scope of the generic formula set out in Benedict's notebook, that formula does not constitute a definite description of the compounds of the count....