Docket Nos. 2012-1214,-1215,-1216,-1217
REYNA, BRYSON, WALLACH
March 25, 2013
Brief summary: UCSF was not able to show the “formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention” (Hybritech, FC 1986) by its inventor (Dr. Dawson). The dissent argued the decision was incorrect because all that was required by others was a reduction to practice.
Summary: University of California, San Francisco (UCSF) appealed BPAI decision that it had not shown Dr. Chandler Dawson had solely invented the claimed methods for treating eye infections. After InSite Vision Incorporated filed a patent application directed to the same subject matter and naming Dr. Dawson and Dr. Lyle Bowman as inventors, UCSF filed an application naming only Dr. Chandler. The BPAI decision followed an interference proceeding regarding these applications. As the junior party, UCSF was required to prove, by a preponderance of the evidence that Dr. Dawson had alone conceived of the claimed methods. The BPAI found that Dr. Dawson “did not fully appreciate how [his] idea was to be implemented in actual practice” but had only “a general idea for a future research plan to come up with a composition” for treating eye infections (“no evidence to suggest a complete conception of the specific formulation”). The FC panel agreed with the BPAI decision, citing Hybritech (FC 1986) (“formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention” (“all that remains to be accomplished…belongs to the department of construction, not creation”) and Burroughs Wellcome (FC 1994)). During development of the composition, Dr. Dawson suggested collaborating with Dr. Bowman. Dr. Charles Leiter, a pharmacist, was also consulted and developed exemplary ointments. Based in part on evidence relating to these collaborations (citing Burroughs and Creative Compounds, LLC (FC 2011) (e.g., Dr. Dawson’s “‘speculat[ion]’ that one method ‘should be the same’ as another method does not show conception”), the FC panel agreed with the BPAI that UCSF had not shown the required “definite and permanent idea” (e.g., conception) of the claimed process in the mind of Dr. Dawson alone. The FC panel also pointed out that it was merely tasked with reviewing the propriety of the decision based on the facts as determined by the Board and not with a de novo review of the evidence. Judge Reyna dissented, arguing that Dr. Dawson possessed a definite and permanent idea of his complete and operative invention while employed by UCSF (e.g., reduction to practice is not required, “[t]he true date of invention is at the point where the work of the inventor ceases and the work of the mechanic begins” (Cameron & Everett v. Brick, 1871 C.D. 89, 90 (Comm’r Pat. 1871)). The dissent also explained that “a preamble is not limiting ‘when the claim body describes a structurally complete invention” (Catalina Marketing, FC 2002) or “it ‘merely gives a descriptive name” to the limitations in the claim (IMS Tech, Inc., FC 2000).