United States: Conception Not Established By Preliminary Statement About Potential Use And Recommendation For Continued Work

In Dawson v. Dawson, Nos. 12-1214, -1215, -1216, -1217 (Fed. Cir. Mar. 25, 2013), the Federal Circuit affirmed the Board's decision in an interference proceeding that the University of California, San Francisco ("UCSF"), failed to prove sole conception by Chandler Dawson prior to his collaboration with Lyle Bowman.  The Court dismissed as moot Drs. Dawson and Bowman's claims that UCSF's conflicting patent claims were unpatentable under 35 U.S.C. §§ 102(b) and 135(b).

In 1997, Dr. Dawson, who was at the time employed by UCSF, gave a presentation to the World Health Organization ("WHO") related to the topical use of azithromycin to control trachoma, a bacterial infection of the eye.  The WHO released a report of the meeting containing a discussion of Dr. Dawson's presentation and listing benefits and objections to topical trachoma treatment.  A second WHO document, which UCSF contends was Dr. Dawson's outline for the presentation, contains many of the same statements as the report, as well as a statement about the difficulties with ointments for trachoma treatment.

After the meeting, Dr. Dawson asked Kenneth Chern to contact Dr. Bowman to assist in creating a suitable ophthalmic medication with azithromycin for topical application to the eye.  In 1999, Drs. Dawson and Bowman filed a patent application that led to the issuance of U.S. Patent Nos. 6,239,113 ("the '113 patent") and 6,569,443 ("the '443 patent").  Both patents are entitled "Topical Treatment or Prevention of Ocular Infections," and the specifications point out many of the difficulties with topical eye treatments that were noted during the development process.  UCSF subsequently filed a patent application naming Dr. Dawson as the sole inventor and generally copying the specification and claims of the '113 and '443 patents to provoke an interference.  After lengthy interference proceedings, the Board found that UCSF had failed to prove sole conception by Dr. Dawson.

"The definition of conception in patent law has remained essentially unchanged for more than a century.  It is the 'formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice.'"  Slip op. at 10 (quoting Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1376 (Fed. Cir. 1986)).

On appeal, the Federal Circuit found no basis for overturning the Board's conclusion that UCSF failed to establish sole conception by Dr. Dawson.  "The definition of conception in patent law has remained essentially unchanged for more than a century."  Slip op. at 10.  "It is the 'formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice.'"  Id. (quoting Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1376 (Fed. Cir. 1986)).  The Court noted that the evidence in the case was unusual as UCSF relied on contemporaneous disclosures of the alleged conception rather than providing testimony from the supposed inventor.  The Court disagreed with UCSF's contention that the WHO documents proved Dr. Dawson's conception, stating that "[a]t best, . . . the WHO Report and WHO document announce a general idea, acknowledge many of the difficulties associated with making that idea operative, and offer some thoughts on how one might proceed . . . ."  Id. at 11.  "A 'preliminary' statement about a 'possibility' or 'potential use,' alongside a recommendation for continued work and a 'report back' in the future, falls short of a 'definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice.'"  Id. at 12 (quoting Hybritech, 802 F.2d at 1376).

The Court concluded that the inadequacy of UCSF's showing was equally clear in the context of the specific interference counts.  The Court found that UCSF failed to establish conception of the specific formulation of the first interference count, reasoning that Dr. Chern would not have sent articles about concentrations to Dr. Bowman if Dr. Dawson had already known what concentration to use.  The Court also found that UCSF failed to establish conception of the effective amount as recited in the second interference count, reasoning that the WHO documents indicated that the efficacy and dosing schedule would need to be determined. 

Next, the Court addressed UCSF's argument that the Board's decision on conception was infected by errors in claim construction and dismissed UCSF's arguments on claim construction as "either beside the point or without merit."  Id. at 15.  The Court stated that the proper meaning of "treating" in the preamble of the count for Interference No. 105,719 was irrelevant to the conclusion that UCSF failed to prove sole conception by Dr. Dawson.  The Court stated that UCSF's arguments regarding "effective amount" in the count for Interference No. 105,729 missed the point because the WHO documents undermined UCSF's contention that Dr. Dawson had permanently and concretely settled on the effective dosage amounts and how to achieve efficacy.

The Court rejected UCSF's argument that the Board erred in considering patent specification statements as inadmissible hearsay, reasoning that UCSF adopted the words in the '113 and '443 patents as its own when it "copied" those words into its patent application that provoked the interferences.  The Court also rejected UCSF's argument that the Board erred in failing to consider statements that the patents' assignee made to the European Patent Office concerning novelty and inventive step.  "In addition to being reluctant to place dispositive weight on one document submitted in a foreign proceeding, the Board properly noted that this case 'deal[s] with conception and actual reduction to practice . . . not lack of novelty or lack of inventive step.'"  Id. at 17.

Finally, the Court addressed UCSF's argument that the Board improperly required a showing of reduction to practice to prove conception.  The Court concluded that UCSF's argument was based on an erroneous view of what is needed to prove conception, stating that "there is a critical difference between conceiving a way to make an idea operative and knowing that a completed invention will work for its intended purpose."  Id. at 18.  The Court stated that it had no reason to overturn the Board's determination that UCSF's evidence of sole conception by Dr. Dawson was insufficient.

Judge Reyna dissented, concluding that the record demonstrated that Dr. Dawson possessed a definite and permanent idea of his complete and operative invention when he presented at the WHO in 1997.  Judge Reyna opined that the majority's conclusion "reflects a misapplication of the law of conception to the facts of this case," stating that "the law [of conception] does not require that Dr. Dawson develop a working physical embodiment of his innovative idea."  Reyna Dissent at 6.

This article previously appeared in Last Month at the Federal Circuit, April, 2013

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