Purpose of Reduction to Practice Experiments May Be Shown in Declarations

Under the U.S. first-to-invent system, the party that is first to conceive the invention, but last to reduce the invention to practice, is still entitled to the patent based on prior
conception if, as first to conceive, they exercised reasonable diligence from a time before the other party's conception date to his own reduction to practice (RTP) date. That diligence must also be cooberated in an often lengthy interference proceeding before the USPTO Board of Patent Appeals and Intereferences.

In Brown v. Barbacid (Fed. Cir.; February 2, 2006), the Board improperly refused to credit any of the work that was performed by Debra Morgan, a scientist working in the Brown laboratory, as evidence of diligence and corroboration of the inventor's, Dr. Reiss', testimony. According to Circuit Judge Newman:

Ms. Morgan declared that she was aware that Dr. Reiss "was working on . . .
the development of an assay for screening of potential inhibitors of this [FT]
enzyme," that she worked on the FT assay, and that she performed experiments
designed by Dr. Reiss. Ms. Morgan stated that her work was to "screen various
peptides for possible inhibitory effect on farnesyl transferase." . . . Ms. Morgan described various farnesyl transferase inhibition studies with reference to the specific study numbers on the notebook pages, and the dates the work was done. She explained a comparative study, with reference to study number and date, in which "a biotin conjugated substrate is used rather than ras as a target for farnesylation," as well as a study in which farnesyl transferase reaction samples were prepared for analysis by thin layer chromatography. Her declaration was accompanied by copies of thirty-eight laboratory notebook pages. Each of the thirty-eight notebook pages was associated with tests specified in her declaration.

The Board found that Ms. Morgan's notebook records along with those of Dr. Reiss filled all but six days of the critical period, and that each of the six remaining days was a single-day gap; this was deemed sufficient to show substantially continuing activity. The Board found that Ms. Morgan "worked for the inventors" and that "her work could inure to the benefit of the inventors to establish reasonable diligence over the entire period." However, the Board refused to credit any of Ms. Morgan's
evidence, criticizing what it described as the absence of explanation of the
content and purpose of these experiments. The Board stated that it was not clear
from the face of the notebook pages what Ms. Morgan had done and why, presenting
as an example of an inadequate record the following page of Ms. Morgan's
notebook:

We conclude that the Board erred in law, in failing to view the proffered evidence as it would be viewed by persons experienced in the field of the invention. See Mahurkar, 79 F.3d at 1577-78 (the trier of fact is aided by an understanding of how the evidence would be viewed by one skilled in the art). The Board is charged with expertise appropriate to the invention under examination, and with understanding that a laboratory notebook recording daily experimentation, reasonably considered from the viewpoint of persons experienced in the field, need not reproduce on each page a statement of the larger research purpose; this purpose may reasonably be shown in the various declarations.

It is undisputed that the subject matter recorded on the Morgan notebook pages and described in her declaration concerns the subject matter of the count. This is the same form and content of evidence that the court in Brown I deemed admissible for purposes of showing conception. The Board agreed that Ms. Morgan's activity during the critical period, if accepted into evidence, established diligence. We conclude that the Board erred in refusing to accept this evidence, and that reasonable diligence is deemed established.

The Board's holding that Brown's reasonable diligence had not been shown is reversed. Although we deplore the lengthy pendency of this proceeding, on remand the Board may decide whether further proceedings as to this issue are warranted.