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Evidence of Diligence in Interference Should Be Viewed as It Would Be by One Skilled in the Art

February 02, 2006

Decision icon Decision

Last Month at the Federal Circuit - March 2006

Judges: Newman (author), Rader, Prost

In Brown v. Barbacid, No. 05-1119 (Fed. Cir. Feb. 2, 2006), the Federal Circuit reversed the Board’s holding that reasonable diligence had not been shown by the senior party in the interference.

The interference proceeding (Interference No. 103,586) involved a method or assay for identifying compounds that inhibit the farnesyl transferase (“FT”) enzyme. Brown, the senior party, has an effective filing date of April 18, 1990, and Barbacid, the junior party, has a filing date of May 8, 1990. The Board accorded Barbacid an actual reduction-topractice date of March 6, 1990.

In a previous appeal, Brown v. Barbacid, 276 F.3d 1327 (Fed. Cir. 2002) (“Brown I”), the Federal Circuit reversed the Board’s holding that the laboratory notebooks and autoradiographs of Brown’s inventor, Dr. Yuval Reiss, did not prove conception for want of adequate explanation. The Court explained that the Board must “weigh that evidence from the vantage point of one of skill in the art,” Brown I, 276 F.3d at 1334, and Brown had presented adequate corroborated evidence of conception. Thus, Brown was held the first to conceive.

On remand, Brown provided Dr. Reiss’s testimony that he pursued experiments directed to the FT enzyme on a daily basis between Barbacid’s reduction-to-practice date and Brown’s filing date. As evidence of corroboration, Brown provided noninventor Debra Morgan’s declaration testimony on various FT inhibition studies, together with thirty-eight pages from Ms. Morgan’s laboratory notebook recording experiments designed by Dr. Reiss. The Board held that Brown failed to provide corroborative evidence of diligence because the content of Ms. Morgan’s notebooks was not explained, and awarded priority to Barbacid.

The parties presented three issues in the second appeal. First, the Federal Circuit held that the Board did not err in declining to permit Barbacid to raise the issue of the length of the period during which diligence should be shown on remand. The Board had previously granted Barbacid an actual reduction to practice date and no conception date. Barbacid’s silence on this issue throughout briefing, argument, and decision in Brown I resulted in waiver of the issue.

Second, the Federal Circuit reversed the Board’s holding that Brown had not shown reasonable diligence. The Court explained that diligence and its corroboration may be shown by a variety of activities and that evidence must be viewed as it would beviewed by persons experienced in the field of the invention, thereby rejecting the notion that such evidence must include an explanation of the “larger research purpose,” as the Board held. Because the Board agreed that Morgan’s activity, if accepted into evidence, established diligence, the Court concluded that Brown established diligence.

The Federal Circuit declined to address the remaining question of patentability. Although it would be in the interest of judicial economy, particularly given that the interference has been pending for over ten years, the Court cannot decide that question ab initio on appeal.