Monday, March 25, 2013

UCSF loses Dawson case at CAFC: the meaning of conception

As to the issue of conception,
the Board found that UCSF had failed to prove sole
conception by Dr. Dawson. The Board found that
Dr.Dawson “did not fully appreciate how [his] idea was to be implemented
in actual practice
”; rather, the Board held,“[w]hat emerges from the
facts of this case is that inventor Dawson had a general
idea for a future research plan to come up with a composition for
topical azithromycin to be applied to the eye to
treat infection.”

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.’”Hybritech, 802 F.2d at 1376.

UCSF objects that the Board erred in
considering statements from the specifications of the ’113 and
’443 patents on the ground that those statements were inadmissible hearsay.
As the Board explained, however,“[a]n admission should not be confused with hearsay,”

Quite apart from reduction to practice, conception requires
that the inventor know how his “‘definite and permanent idea of the
complete and operativ e invention ... is hereafter to beapplied in practice.’”
Hybritec, 802 F.2d at 1376. In other words, part of the conception inquiry asks
whether the inventor “possess[ed] an operative method of making[the invention].”
Invitrogen Corp. v. Clontech Labs., Inc., 429 F.3d 1052, 1063 (Fed. Cir. 2005).


Judge Reyna dissented.



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