Eli Lilly and Company v. Brenner

• Citation: 248 F. Supp. 402
• Decision Date: 06 December 1965
• Docket Number: C. A. No. 2817-64.
• Parties: ELI LILLY AND COMPANY, Plaintiff, v. Edward J. BRENNER, Commissioner of Patents, Defendant.
• Court: U.S. District Court — District of Columbia

248 F. Supp. 402

ELI LILLY AND COMPANY, Plaintiff, v. Edward J. BRENNER, Commissioner of Patents, Defendant.

C. A. No. 2817-64.

United States District Court District of Columbia.

December 6, 1965.

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James H. Littlepage, Washington, D. C., Dugald S. McDougall, Chicago, Ill., for plaintiff.

Joseph Schimmel, Deputy Solicitor, Washington, D. C., for defendant.

JACKSON, District Judge.

This is a civil action to obtain a patent brought by plaintiff, assignee of the patent application in suit, against defendant in his official capacity as Commissioner of Patents, according to the provisions of 35 U.S.C. § 145.

Plaintiff's assignor, Richard T. Rapala, filed an application for patent, entitled "Novel Pregnenolone Acetonides", on July 27, 1961, and the Patent Office identified the application as Serial No. 127,115. In the course of prosecution of this application, all the claims were finally rejected by the Examiner as unpatentable over a United States patent of Feather et al., patent No. 3,021,345, which was granted February 13, 1962, on an application for patent actually filed in the United States on September 19, 1960. Prior to the grant of this patent, Feather et al. properly claimed the right of priority of a corresponding patent application filed in the British Patent Office on September 24, 1959, and a certified copy of this counterpart British application for the same invention was filed in the United States Patent Office.

Thus, the British and American filing dates for the respective Feather et al. patent applications were both prior to the actual filing date of Rapala's United States application. Faced with this fact situation, Rapala filed an affidavit under Rule 131 of the Patent Office Rules of Practice in order to prove an actual reduction to practice of his claimed invention in this country prior to the actual filing date of the Feather et al. United States patent application, September 19, 1960. However, Rapala did not prove an actual reduction to practice of his invention in this country prior to September 24, 1959, the filing date of the Feather et al. British patent application. Since Rapala made no attempt in the Patent Office to antedate the Feather et al. British application date, it must be presumed that he is unable to do so, especially since plaintiff has made no offer to prove in this Court a date of actual reduction to practice in this country by Rapala prior to September 24, 1959. If plaintiff were able to prove this, it would have made such an offer of proof, since a civil action under 35 U.S.C. § 145 is in the nature of a trial de novo, and a plaintiff is not bound by the record established by proceedings in the Patent Office. Moreover, both plaintiff and defendant in the present case agree that there is no genuine issue as to any material fact and both parties have moved for summary judgment pursuant to Rule 56 of the Federal Rules of Civil Procedure.

Therefore, there is no question whatsoever that the relationship of critical dates is that Rapala proved a date of invention by actual reduction to practice of his claimed invention in this country at some time during the time interval of nearly one year between the filing date of the Feather et al. British application, September 24, 1959, and the actual filing date of the counterpart Feather et al. United States application, September 19, 1960. At this point, it is worthy of mention that a date of invention may be established by any one of at least three means, namely: (1) actual reduction to practice, wherein the invention is made as a matter of fact in this country¹; (2) constructive reduction to practice, wherein the invention is made as a matter of law in this country by filing an appropriate application in the United States Patent Office; and (3) constructive reduction to practice wherein the invention is made as a matter of law in this country by filing an appropriate application in a foreign country, then subsequently filing within one year an application in the United States Patent Office, which subsequent application is entitled to the full benefit of the earlier filing date in the foreign country for essentially all purposes,² if and provided that the full requirements of 35 U.S.C. § 119 are met.

It should also be mentioned that invention itself consists of two aspects, conception and reduction to practice. If Rapala had been able to prove conception of his invention prior to the British filing date of Feather et al., coupled with proof of due diligence on the part of Rapala from a time just prior to this September 24, 1959 British filing date until Rapala's reduction to practice during the interval between the Feather et al. British and American filing dates, then this reference, on the facts of this case, would have been removed for all purposes. Since no questions of conception coupled with due diligence are raised in this case, this constitutes sufficient discussion of these factors.

The important question to be settled in this case is one of first impression in this Court. The issue may be stated to be whether, in a situation where a foreign inventor has been granted a United States patent on a United States patent application which is entitled under 35 U.S.C. § 119 to the benefit of an earlier application filing date in a foreign country, this United States patent is available as a reference under 35 U.S.C. § 102(e)³ for all disclosed subject matter, whether claimed or unclaimed, as of the filing date of the earlier foreign application. This Court agrees with defendant and holds that the foreign filing date is the effective reference date as to all subject matter which is disclosed, whether claimed or not, in the foreign application, to the extent that such disclosures are brought forward and included in both the United States application and the United States patent granted on this application, the latter, of course, being the basis for a 35 U.S.C. § 102(e) rejection.

An important related question is whether another inventor, by proving a date of invention in this country, by either actual or constructive reduction to practice,⁴ during the time interval between the foreign filing date and the actual United States filing date of a foreign inventor's patent applications the foreign inventor's United States application being entitled under 35 U.S.C. § 119 to benefit of the earlier filing date of the foreign application, can thereby remove the foreign inventor's United States patent as a reference. The Court holds that such reduction to practice during the time interval between the foreign inventor's foreign and actual United States filing dates will not suffice to remove the foreign inventor's United States patent as a reference, as to subject matter disclosed in the United States patent reference, whether claimed therein or not, provided that the disclosed subject matter in the United States patent corresponds to disclosures in the foreign patent application, or applications as the case may be, which serves as the basis of the right of priority accorded to the foreign inventor's United States patent application. It is likewise immaterial whether the subject matter relied upon for reference purposes is claimed or not in the foreign application, so long as it is disclosed therein.

Before proceeding to a more detailed discussion of this case, the Court considers it desirable, in view of the evident confusion as to effective reference dates on the part of writers on this subject, to provide a few examples to illustrate the holding herein.

In the simplest case, the foreign inventor's foreign and United States applications are essentially identical, with allowances for immaterial variations in wording, formal arrangement, and language translation. Therefore, the foreign inventor's United States patent will be essentially identical to his foreign application, and will be effective as a reference from the foreign filing date. Of course, it should not even be necessary to say that a United States patent cannot be cited as a reference under 35 U.S.C. § 102(e) until the patent is actually granted. When it is granted, the effective date of the United States patent relates back to the foreign filing date, assuming always that 35 U.S.C. § 119 is applicable.

Suppose now that certain disclosures in the foreign application are omitted, for any reason, from the counterpart United States application. If these disclosures are not added by amendment, assuming this is permissible, then the corresponding United States patent will not contain these disclosures. For whatever value these omitted disclosures may have, if any, they certainly cannot give rise to a proper 35 U.S.C. § 102(e) rejection, which must be based on disclosure actually present in, as distinguished from omitted from, a United States patent.

Another possibility is that subject matter originally present in both the United States and foreign applications may be cancelled from the United States application prior to grant. Once again, a 35 U.S.C. § 102(e) rejection cannot be properly based on disclosures omitted from the United States patent, even though such disclosures were present at one time during the prosecution of the United States application upon which the patent was granted.

As another example, suppose that new subject matter is presented for the first time when the foreign inventor's United States application is filed. Here it is appropriate to consider the analogous situation with regard to 35 U.S.C. § 120. It is believed to be recognized by everyone that the new subject matter of a United States continuation-in-part application must stand on its own filing date. This new subject matter, unlike the commonly disclosed subject matter, is not entitled to the benefit of the filing date of an earlier parent United States application. More will be said about the analogy between 35...