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Court Vacates Award of Priority in Interference Proceeding

January 11, 2002

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Last Month at the Federal Circuit - February 2002

Judges: Rader (author), Michel, and Newman (dissenting)

In Brown v. Barbacid, No. 00-1590 (Fed. Cir. Jan. 11, 2002), the Federal Circuit vacated an award of priority by the Board in an interference proceeding because the Board had failed to properly consider evidence of the conception of the invention and diligence by one party.

The interference concerns U.S. Patent No. 5,185,248 (“the Barbacid patent”) and U.S. Patent Application Serial No. 07/937,893 (“the Brown application”). The Barbacid patent and the Brown application both claim an assay for identifying new anticancer compounds that inhibit farnesyl transferase (“FT”), an enzyme involved in the control of cell growth. The method of the count at issue in the interference uses: (1) FT; (2) farnesyl pyrophosphate, i.e., the source of farnesyl; (3) a “farnesyl acceptor substance” or “protein or peptide substrate having a CAAX motif,” i.e., ras or a peptide of ras containing the CAAX motif (which is farnesylated); and (4) a test or candidate substrate, which inhibits FT and, therefore, ras protein activity.

The Barbacid patent application was filed on May 8, 1990, while the Brown application was accorded the benefit of an application filed on April 18, 1990. Thus, Brown was named the senior party.

Barbacid showed an actual reduction to practice no later than March 6, 1990. On appeal, the Federal Circuit first addressed whether a senior party has the burden to show by a propoundence a date of invention before the priority date shown by the junior party. The Court ruled that the burden rests on the junior party to establish priority by a preponderance of evidence; however, both parties must be given an opportunity to submit evidence regarding priority in an interference proceeding. The junior party’s burden, however, never shifts.

As to the evidence, the Federal Circuit concluded that the Board had failed to properly consider notebook entries of Dr. Reiss showing his conception of aspects of the count. The Board had abused its discretion, the Court concluded, in excluding these notebook entries for lack of authentication.

The notebook entries, however, did not show all limitations of the count. Dr. Reiss testified that experiments conducted on September 25, 1989, contained all the limitations of the count, but the testimony was not corroborated by Dr. Patrick Casey’s testimony. Accordingly, the Board did not err when it determined that evidence regarding a December 1989 experiment did not show a reduction to practice by Brown. The Federal Circuit found, however, that physical evidence itself, the February 25th notebook pages and autoradiographs, showed that an experiment containing all elements of the count took place on that date. The Court ruled that physical evidence requires no further corroboration to demonstrate the content of the physical evidence itself. In addition, Dr. Casey’s testimony does corroborate Dr. Reiss’s testimony of a conception before December 1989. The Federal Circuit ruled that the Board had erred in not considering all of this evidence with regard to the date of conception by Brown as well as additional evidence concerning Brown’s diligence.

Judge Newman dissented, concluding that the majority wrongly stated the burdens of proof and production in patent interferences. She concluded that the Board had correctly required Brown, the senior party, to meet the burden of proving by a preponderance of evidence, conception, and/or reduction to practice before the date that had been proven by the junior party, Barbacid.