Patent Law

Dissolved

By Gary Odom and Jordan Kuhn

Last week's CAFC showdown over inventorship highlights the foolery of first-to-invent, an anachronism indulged in only by the U.S. All other countries in the world use a first-to-invent priority system. The next-to-last to abandon first-to-file was the Philippines, in 1997. In this episode, Henkel battled Procter & Gamble over a dishwater detergent fizzie.

Henkel v. Procter & Gamble (CAFC 2008-1447) precedential

P&G got 6,399,564, which Henkel put into an interference over who invented "that the compressed portion of the tablet dissolve at a faster rate than the non-compressed portion." This was the second round of appeals in this matter.

Whether an invention has been reduced to practice is a question of law based on underlying facts. Cooper v. Goldfarb, 154 F.3d 1321, 1327 (Fed. Cir. 1998). Accordingly, the Board's ultimate conclusion of reduction to practice is reviewed de novo, while its underlying factual findings are reviewed for substantial evidence. Henkel I, 485 F.3d at 1374. "Substantial evidence is more than a mere scintilla. It means such relevant evidence as a reasonable mind might accept as adequate to support a conclusion." Consol. Edison Co. v. NLRB, 305 U.S. 197, 229 (1938).

Following our remand in Henkel I, the Board found that P&G demonstrated an actual reduction to practice in February 1997, Board Decision at 10, predating Henkel's reduction to practice in May 1997, and thus awarded priority of invention to P&G, id. at 69. In so doing, the Board made a key factual determination--that P&G inventors appreciated by February 1997 the limitation in the count requiring that the compressed region of the tablet dissolve at a greater rate than the non-compressed region. Id. at 61-62. Whether substantial evidence supports this finding of fact is the only issue on appeal.

"In order to establish an actual reduction to practice, the inventor must prove that: (1) he constructed an embodiment or performed a process that met all the limitations of the interference count; and (2) he determined that the invention would work for its intended purpose." Cooper, 154 F.3d at 1327. The inventor must also "contemporaneously appreciate that the embodiment worked and that it met all the limitations of the interference count." Id.; see also Henkel I, 485 F.3d at 1374. As we held in Henkel I, to demonstrate a reduction to practice of the invention at issue here the inventors need only appreciate "that the dissolution rate of the compressed region is greater than the dissolution rate of the other region." Henkel I, 485 F.3d at 1375.

The dispositive evidence in favor of Procter & Gamble was a swearing back based upon a notebook, the Metzger-Groom Report.

The Metzger-Groom Report documents the preparation and testing of the tablet discussed in the McGregor Record of Invention.

The interpretation of the critical portion of the Metzger-Groom Report is a very close call, and can reasonably go either way. But our inquiry in this case is not how we would interpret this statement in the Metzger-Groom Report were we to do so in the first instance. Rather, our task is to determine whether the Board's interpretation is supported by substantial evidence. We conclude that it is.

Thus, even if we were to assume for the sake of this appeal that Henkel's interpretation of the Metzger-Groom Report is also reasonable, the substantial evidence standard of review compels affirmance of the Board's interpretation. See Guise v. Dep't of Justice, 330 F.3d 1376, 1381 (Fed. Cir. 2003) (finding Merit System Protection Board's interpretation of evidence supported by substantial evidence where the interpretation was reasonable); see also NLRB v. Augusta Bakery Corp., 957 F.2d 1467, 1473 (7th Cir. 1992) ("Where two inferences are possible, we cannot substitute our own inference for that of the Board, so long as the Board's is supported by substantial evidence in the record as a whole."); Midland Transp. Co. v. NLRB, 962 F.2d 1323, 1326 (8th Cir. 1992) ("We may not substitute our interpretation of the evidence for the Board's reasonable inferences.").

Because Henkel challenges only the Board's interpretation of the Metzger-Groom Report and not the Board's conclusion of corroboration based on that interpretation, we affirm the Board's award of priority of invention to P&G.

Affirmed.

Full post as published by The Patent Prospector on March 23, 2009 (boomark / email).