In addressing the issue of the extent to which a party need appreciate an embodiment of its invention to show that the party was first to actually reduce the claimed invention to practice, the U.S. Court of Appeals for the Federal Circuit vacated and remanded a judgment by the U.S. Patent and Trademark Office’s Board of Patent Appeals and Interferences (the Board), finding that in terms of the scope of the interference count, the appellant did appreciate the invention at the time of its alleged actual reduction to practice. Henkel Corp. v. Proctor & Gamble Co., Case No. 06-1542 (Fed. Cir., May 11, 2007) (Linn, J.)
Henkel and P&G each invented a dishwashing tablet comprised of a solidified solution (or melt) portion and a compressed portion that dissolved at a faster rate than the melt portion. In an interference proceeding concerning the invention, the Board awarded priority to P&G based on the priority date of its application for patent being earlier than the priority date of Henkel’s two German priority applications. During the interference proceeding, Henkel argued priority on the basis that it had both conceived and reduced the invention to practice at the same time.
Henkel’s argument relied on the evidence that its inventors had observed that the melt region of the tablet does not dissolve in the pre-wash cycle, whereas the compressed region of the same tablet lost about 30 percent of its weight during the same cycle. Additional research showed that tablets with a melt region lost a smaller percentage of their weight compared to tablets without a melt region. P&G argued that in order to measure comparative dissolution rates, samples of compressed and melt regions had to be apportioned into equal weights and tested at a constant temperature in separate compartments. Although the Board disagreed with P&G’s standard, the Board held that Henkel’s inventors had failed to appreciate that which they had invented contemporaneously with their conception and reduction to practice because the inventors had not calculated a specific measurement of dissolution rates. Henkel appealed.
The Federal Circuit reversed, finding that the Board held Henkel to a more stringent standard than warranted for the count in interference. The count did not recite specific dissolution rates, only that one portion of the tablet dissolves faster than the other. Since Henkel’s inventors had shown that the two portions of the tablet dissolved at different rates, the Court held that Henkel had enough evidence to demonstrate that its inventors appreciated that the tablet met the "faster rate" limitation as broadly recited in the count. "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."
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