David. V. Goeddel and Robert Crea v. Haruo Sugano, Masami Muramatsu, and Tadatsugu Taniguchi (CAFC  2009-1156, -1157) precedential

Interference priority is awarded to the first applicant to conceive the invention, provided that the invention is duly reduced to practice, actually or constructively. See Hyatt v. Boone, 146 F.3d 1348, 1351 (Fed. Cir. 1998); see generally Charles L. Gholz, Interference Practice, in Patent Practice, 24-1, 24-6 (Irving Kayton and Karyl S. Kayton eds., 4th ed. 1989). Reduction to practice of the subject of the interference count may be established by evidence of its actual performance, see Cooper v. Goldfarb, 154 F.3d 1321, 1327 (Fed. Cir. 1998), or constructively by filing a patent application that describes and enables its practice in accordance with 35 U.S.C. §112, see Hyatt, 146 F.3d at 1352. An invention for which the priority of a foreign patent application is available in accordance with treaty and statute may rely on the content of the foreign application for constructive reduction to practice, provided that the requirements of §112 are met. See Gholz, supra, at 24-8.

Goeddel argued "that the Japanese Application does not meet the written description and enablement requirements of 35 U.S.C. §112 with respect to the interference counts, and therefore is not a constructive reduction to practice of the counts. Goeddel points out that the Japanese Application 'is devoid of any disclosure of a method of making the claimed subject matter.'"

The Board figured that the mature gene would be "readily apparent" in view of the precursor and an article referenced in the Japanese application, so constructive reduction to practice had been achieved.

The question is not whether one skilled in this field of science might have been able to produce mature hFIF by building upon the teachings of the Japanese Application, but rather whether that application "convey[ed] to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date." Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc); see also Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997) (in claiming priority under §120, "[a] description which renders obvious the invention for which an earlier filing date is sought is not sufficient"); Bradford Co. v. Conteyor North Am., Inc., 603 F.3d 1262, 1269 (Fed. Cir. 2010) (same). The Japanese application does not describe a bacterial expression vector that directly produces the mature hFIF, nor does it suggest producing a modified gene to directly encode the 166 amino acid mature hFIF.

The Board erred in ruling that priority is established if a person of skill in the art could "envision" the invention of the counts.

On appellate review, we conclude that the Japanese application does not establish constructive reduction to practice of the subject matter of the counts.

Reversed and remanded.