Fiers v. Revel, s. 92-1170

• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
• Citation: 25 USPQ2d 1601,984 F.2d 1164
• Docket Number: Nos. 92-1170,92-1171,s. 92-1170
• Parties: Walter C. FIERS, Appellant, v. Michel REVEL and Pierre Tiollais, Appellants, v. Haruo SUGANO, Masami Muramatsu and Tadatsugu Taniguchi, Appellees.
• Decision Date: 19 January 1993

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984 F.2d 1164 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. Jan. 19, 1993.

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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.

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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

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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 Machinery, Ltd, 731 F.2d 831, 837, 221 USPQ 561, 565 (Fed.Cir.1984)). Although Amgen was the first case in which we discussed conception of a DNA sequence coding for a specific protein, we were not writing on a clean slate. We stated:

Conception does not occur unless one has a mental picture of the structure of the chemical, or is able to define it by its method of preparation, its physical or chemical properties, or whatever characteristics sufficiently distinguish it. It is not sufficient to define it solely by its

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principal biological property, e.g., encoding human erythropoietin, because an alleged conception having no more specificity than that is simply a wish to know the identity of any material with that biological property. We hold that when an inventor is unable to envision the detailed chemical structure of the gene so as to distinguish it from other materials, as well as a method for obtaining it, conception has not been achieved until reduction to practice has occurred, i.e., until after the gene has been isolated.

927 F.2d at 1206, 18 USPQ2d at 1021. We thus determined that, irrespective of the complexity or simplicity of the method of isolation employed, conception of a DNA, like conception of any chemical substance, requires a definition of that substance other than by its functional utility.

Fiers' attempt to distinguish Amgen therefore is incorrect. We also reject Fiers' argument that the existence of a workable method for preparing a DNA establishes conception of that material. Our statement in Amgen that conception may occur, inter alia, when one is able to define a chemical by its method of preparation requires that the DNA be claimed by its method of preparation. We recognized that, in addition to being claimable by structure or physical properties, a chemical material can be claimed by means of a process. A product-by-process claim normally is an after-the-fact definition, used after one has obtained a material by a particular process. Before reduction to practice, conception only of a process for making a substance, without a conception of a structural or equivalent definition of that substance, can at most constitute a conception of the substance claimed as a...