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Mere Identification of Some Aspects of Count Fails to Prove Priority of Overall Count

April 02, 2002

Decision icon Decision

Last Month at the Federal Circuit - May 2002

Judges: Lourie (author), Michel, and Dyk

In Griffin v. Bertina, No. 01-1399 (Fed. Cir. Apr. 2, 2002), the Federal Circuit affirmed a decision of the Board awarding judgment in an interference to the senior party, Rogier M. Bertina and Pieter H. Reitsma (collectively “Bertina”), because the junior party had failed to show that it reduced the invention to practice before Bertina’s priority date.

John H. Griffin and Judith Greengard (collectively “Griffin”) filed a patent application on March 23, 1995, claiming an invention directed to diagnosing thrombosis, and Bertina filed a patent application on June 6, 1995, claiming a similar invention. The Board declared an interference between the two applications. Bertina’s application was accorded the benefit of the filing dates of a PCT Application filed on February 14, 1995, and a European Patent Application filed on February 14, 1994. Griffin offered testimony that the inventors identified the relevant mutation in the gene before a December 2, 1993, meeting and contended that this discovery constituted a reduction to practice of the invention. The Board concluded that there was no indication that the Griffin inventors appreciated the significance of the mutation and, therefore, ruled that they had not reduced the invention to practice. Thus, the Board awarded priority to Bertina.

On appeal, the Federal Circuit concluded that the Board did not err in construing the count to be limited by the preamble because the preamble has the import that the claim as a whole suggests for it. In this case, the preamble was directed to diagnosing an increased risk for thrombosis or a genetic defect causing that disease, which was again stated in the body of the count. The Court found that “diagnosis” is the “essence” of the invention and gives meaning to the first step of the body of the count, obtaining test nucleic acid from a “test subject,” and the second step of “assaying for the presence of a point mutation.”

The Federal Circuit also held that the Board was correct in construing the “wherein” clauses of the count as an effective limitation, ruling that both “wherein” clauses give purpose and meaning to the manipulative steps of the count by placing them within the context of the diagnosis of an increased risk of developing thrombosis. In this case, the correlation between the mutation and the increased risk of disease appeared to be material to the patentability of the count, and Griffin had offered no evidence to show that prior to December 2, 1993, the inventors appreciated this correlation. The Court stressed that Griffin did not demonstrate reduction to practice because the inventors did not appreciate the utility of their findings; rather, they merely identified one data point in their pursuit to correlate a genetic mutation to increased risk of disease.

Thus, the Court held that the Board properly construed the count by including the preamble and the “wherein” clauses and that, in so construing the count, the Board did not err in concluding that Griffin failed to show that it had reduced the invention to practice before Bertina’s priority date.