Factual Findings Supporting Award of Priority Reviewed for Substantial Evidence
March 18, 2009
Last Month at the Federal Circuit - April 2009
Judges: Linn (author), Prost, Moore
[Appealed from: Board]
In Henkel Corp. v. Proctor & Gamble Co., No. 08-1447 (Fed. Cir. Mar. 18, 2009), the Federal Circuit affirmed the Board’s award of priority of invention to The Proctor & Gamble Company (“P&G”) because the Board’s underlying factual determinations supporting the award were reasonable.
Claim 1 of U.S. Patent No. 6,399,564 (“the ’564 patent”), owned by P&G, is representative of the count at issue in an interference between P&G and Henkel Corporation (“Henkel”) concerning two-region dishwasher detergent tablets. Specifically, claim 1 calls for a detergent tablet having a compressed portion that dissolves at a faster rate than a noncompressed portion.
In a previous appeal, the Court determined that the reduction to practice of the invention required a demonstration that the inventors appreciated that the dissolution rate of the compressed region was greater than the dissolution rate of the noncompressed region. The Court concluded that Henkel had demonstrated such an appreciation no later than May 1997.
On remand, the Board held that P&G had made, and at least one inventor appreciated, an embodiment within the scope of the count before Henkel’s earliest reduction to practice, specifically in February 1997. Consequently, the Board awarded priority of invention to P&G.
In the present appeal, the Court reviewed the Board’s underlying factual findings supporting the award of priority for substantial evidence. Specifically, the Court reviewed whether substantial evidence supports the Board’s determination that P&G’s inventors appreciated, before Henkel, that the compressed region of the tablet dissolved at a greater rate than a noncompressed region.
In its determination, the Board concluded that the testimony of a P&G inventor (McGregor) concerning when he appreciated the dissolution rates was corroborated by a P&G monthly report (the “Metzger-Groom report”). The Metzger-Groom report described a loss of performance of a two-region “dimple” tablet, which contained a compressed region and a noncompressed region. Slip op. at 6. The Metzger-Groom report further noted that the loss of performance could have been the result of “slower release of [the noncompressed region] from the dimple vs. regular [compressed] tablets.” Id. The Board interpreted this passage of the Metzger-Groom report as an appreciation by McGregor (and P&G) of the comparative dissolution rates before Henkel.
P&G and Henkel offered competing interpretations of that portion of the Metzger-Groom report and the Court acknowledged that interpretation of that portion could reasonably go either way. The Federal Circuit noted that its inquiry was not how to interpret the portion of the Metzger-Groom report in the first instance, but whether the Board’s interpretation was supported by substantial evidence. Id. at 7. Pointing to the Metzger-Groom report’s focus on testing the two-region dimple tablet and its general reference to dissolution rates, the Court determined that the Board’s interpretation was reasonable. Accordingly, the substantial evidence standard of review compelled affirmance of the Board’s interpretation.
Finally, the Court noted that Henkel’s challenge was limited to the Board’s interpretation of the Metzger-Groom report and not the Board’s conclusion of corroboration based on that interpretation. Since the interpretation was reasonable, the Court affirmed the Board’s award of priority of invention to P&G.