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Aimed at Commercial Practice of Process

01-1161
February 27, 2002

Decision icon Decision

Last Month at the Federal Circuit - March 2002

Judges: Newman (author), Schall, and Bryson

In Scott v. Koyama, No. 01-1161 (Fed. Cir. Feb. 27, 2002), the Federal Circuit reversed a decision by the Board and held that preparations aimed at commercial practice of a process constitute evidence of diligence.

Satoshi Koyama (“Koyama”) claimed priority of invention over John Scott and Rachel Steven (collectively “Scott”) for a process of producing 1,1,1,2- tetrafluoroethane, a replacement for chlorofluorocarbons in refrigerant systems. Koyama claimed priority because his Japanese patent application filed on March 13, 1990, predated Scott’s March 29, 1990, filing in the United Kingdom. The Board asserted that Koyama’s earlier Japanese filing date provided a reputable presumption of Koyama’s priority. Accordingly, to overcome the presumption of priority, Scott bore the burden of demonstrating (1) conception before Koyama’s filing date and (2) either actual reduction to practice before Koyama’s filing date or diligence from a time prior to Koyama’s filing date through Scott’s effective filing date of March 29, 1990.

Koyama conceded that Scott’s full disclosure of the claimed process within materials provided to ICI America predated Koyama’s priority date and, thus, satisfied the “conception” prong of the interference analysis. The Board concluded, however, that Scott failed to satisfy the reduction to practice or diligence prong of the interference analysis. Whereas Scott had successfully completed the chemical process of producing the chlorofluorocarbon replacement in the United Kingdom, Scott had not physically produced the invention in the United States. Therefore, Scott had not performed the requisite step of embodying the invention in a tangible form in the United States, as required for reduction to practice under 35 U.S.C. § 119.

Scott argued that they had satisfied the diligence prong of the interference analysis by engaging in daily efforts to build a facility to practice the claimed process of producing the chlorofluorocarbon replacement. The Board rejected Scott’s contentions, reasoning that Scott’s activity constituted mere preparation aimed at commercialization. The Board therefore concluded that Scott did not satisfy the requisite diligence to reduction to practice and awarded priority to Koyama.

The Federal Circuit rejected the Board’s conclusion and found that efforts toward actual reduction to practice are relevant evidence of diligence until constructive reduction to practice. The Federal Circuit held that efforts to build a facility necessary for the largescale practice of the claimed process constitute diligence for purposes of an interference under § 119. Accordingly, the Federal Circuit reversed the Board’s decision and remanded with instructions to enter priority for Scott.