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Documented Conception Only Partially Overlaps with Subject Matter of Count

October 29, 2002

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Last Month at the Federal Circuit - November 2002

Judges: Clevenger (author), Michel, and Bryson

In In re Jolley, No. 01-1646 (Fed. Cir. Oct. 29, 2002), the Federal Circuit found that the Board’s factual determinations were supported by substantial evidence and affirmed the Board’s award of priority.

On April 25, 1989, Scott T. Jolley filed U.S. Patent Application No. 07/608,600 (“the ‘600 application”). On October 20, 1989, Phillip W. McGraw, Eldon L. Ward, and Michael W. Edens (collectively “McGraw”) filed an application that matured into U.S. Patent No. 4,959,169 (“the ‘169 patent”). The ‘600 application and the ‘169 patent both relate to an ester lubricant composition that is compatible with chlorine-free hydrofluorocarbon(“HFC”) refrigerants.

To determine priority of invention, Jolley and McGraw participated in a five-way interference proceeding having a single count. During the interference proceeding, Jolley established a date of conception of June 2, 1988. The Board awarded priority to McGraw, however, because McGraw had established a prior date of conception of May 20, 1988, with diligence extending to a reduction to practice in September or October of 1988. The Board further found that Jolley’s claims were anticipated by U.S. Patent No. 2,807,155 (“the ‘155 patent”).

The interference count was directed to a “two-component” composition: an HFC refrigerant and an ester lubricant. To prove conception, McGraw submitted a May 20, 1988, e-mail that described using only some of the esters within the count limitations in addition to other esters outside of the count limitations. Jolley argued that every limitation of the count must have been known to the inventor at the time of the alleged conception, and thus, the e-mail was not sufficient evidence to establish May 20, 1988, as a date of conception for McGraw.

The Federal Circuit ruled that the determinative inquiry was whether the idea expressed in the evidence was sufficiently developed to support conception of the subject matter of the interference count. The Federal Circuit explained that the evidence of conception should fairly suggest to one of ordinary skill the subject matter of the count, without the need for extensive experimentation to ascertain whether the matter encompassed by the disclosure suggests the desirable features of compositions belonging to the count.

Jolley argued that the evidence submitted by McGraw was legally insufficient, and thus, the Board was precluded from using the evidence. The Federal Circuit ruled that the evidence was legally sufficient, but acknowledged that several inconsistent conclusions could be drawn from McGraw’s evidence. However, the Federal Circuit held that, under the substantial evidence standard, the possibility of drawing two inconsistent conclusions from the evidence does not render a Board’s findings unsupported by substantial evidence. Thus, the Federal Circuit found that the Board’s conclusions were reasonable and refused to secondguess the Board’s finding that McGraw had established a prior date of conception.

As to priority, Jolley argued that there was a gap in McGraw’s diligence caused by his pursuit of a separate invention that was completely outside of the scope of the count. The Court was not convinced, however, finding that any gaps of inactivity were excusable as reasonable everyday problems and limitations. Therefore, the Federal Circuit affirmed the Board’s decision to grant priority to McGraw.

In light of the affirmance of the Board’s award of priority to McGraw, the Federal Circuit did not address the Board’s determination that the ‘155 patent anticipated Jolley’s claims corresponding to the interference count.