Before the Appeals Court (CAFC 06-1542).

Henkel and Procter & Gamble are competing manufacturers of dishwashing detergent tablets. This appeal concerns detergent tablets that are divided into two regions: a “compressed” region, and a “solidified solution or melt” region, wherein the compressed region dissolves “at a faster rate” than the solidified region. Henkel Corp. v. Proctor & Gamble Co., Paper No. 115, Patent Interference No. 105,174, slip op. at 1–2 (B.P.A.I. May 3, 2006) (“Interference Opinion”). Procter & Gamble’s U.S. Patent No. 6,339,564 (the “’564 patent”) and Henkel’s U.S. Patent Application Nos. 09/446,434 and 09/446,578 (respectively, the “’434 application” and “’578 application”) all claim such tablets, also known as “ring tabs.”

Henkel was trying to swear behind Procter & Gamble's priority date.

“To succeed in an interference proceeding . . . , a party that does not have the earliest effective filing date needs only to demonstrate by a preponderance of the evidence that it was the first to invent if the two patents or applications at issue were co-pending before the PTO,” as they were in this case. Eli Lilly & Co. v. Aradigm Corp., 376 F.3d 1352, 1365 (Fed. Cir. 2002).

On May 3, 2006, the Board issued its decision and awarded priority against Henkel. In the interference proceeding, Henkel did not attempt to allege conception coupled with reasonable diligence to a reduction to practice; rather, it argued that it had both conceived and reduced the invention to practice before Procter & Gamble’s constructive reduction to practice date of November 19, 1997. See 35 U.S.C. § 102(g).

There was dispute over what "dissolution rate" meant.

For purposes of the interference, the Board [BPAI] applied Henkel’s methodology, but it nonetheless concluded that Henkel had failed to carry its burden of showing that it had conceived and reduced to practice before Procter & Gamble.

But the BPAI got it wrong.

We agree with Henkel that an explicit calculation or measurement of quantitative dissolution rates is unnecessary. We agree with Henkel that an explicit calculation or measurement of quantitative dissolution rates is unnecessary... By imposing a requirement to show appreciation of specific dissolution rates, the Board incorrectly held Henkel to a more stringent standard than warranted by the interference count. This constitutes legal error. The correct requirement of the count calls for a showing of an appreciation by the inventors simply that the dissolution rate of the compressed region is greater than the dissolution rate of the other region.

As a matter of law, we do not require that a junior party in an interference demonstrate that it recognized the exact language of the ultimate count—only the subject matter of the invention. See Mycogen Plant Sci., Inc. v. Monsanto Co., 243 F.3d 1316, 1336 (Fed. Cir. 2001).

Vacated and remanded; back to the Board to tidy up their own little misunderstanding.

Because the Board legally erred in imposing a requirement for reduction to practice not warranted by the language of the interference count, and because the Board’s factual findings support reduction to practice under the correct requirements of the count, we vacate and remand.

First-to-file is one of the good bits of the Patent Reform Act of 2007. The United States is the only country in the world with the troublesome first-to-invent patent regime.