Henkel Corp. v. Proctor & Gamble Co. (Henkel II)
560 F.3d 1286 (Fed. Cir. 2009)
Facts:
This case involves an interference proceeding between Henkel Corp. and Proctor & Gamble Co. (“P&Gâ€). Claim 1 of P&G’s U.S. Patent No. 6,399,564 is representative of the interference count: “A detergent tablet comprising a compressed portion and a non-compressed portion wherein . . . said compressed portion comprises a mould and dissolves at a faster rate than said non-compressed portion . . . .†P&G produced 1) P&G inventor testimony that he appreciated the limitation in the count requiring that the compressed region of the tablet dissolve at a greater rate and 2) a January 1997 P&G report which stated that there was a “slower release of NB-base from the dimple vs. regular tablets.â€
Procedural Posture:
In Henkel I, the Federal Circuit held that Henkel had reduced the interference count to practice no later than May 1997. Henkel Corp. v. Proctor & Gamble Co., 485 F.3d 1370, 1376 (Fed. Cir. 2007). On remand, the Board of Patent Appeals and Interferences held that P&G had reduced the interference count to practice in February 1997, predating Henkel’s May 1997 reduction to practice, and awarded P&G priority. Henkel appealed this holding.
Issue:
Underlying the Board’s holding that P&G had priority was the key factual determination that P&G appreciated by February 1997 the limitation in the count requiring that the compressed region of the tablet dissolve at a greater rate. The key issue is thus whether substantial evidence supports this factual finding by the Board.
Holding:
Because the Board’s decision is supported by substantial evidence, affirm and hold that P&G was correctly awarded priority.
Reasoning:
Reduction to practice requires that the inventor prove that he constructed the embodiment meeting all limitations of the interference count, determined the invention would work for its intended purpose, and appreciated that the embodiment worked and that it met all of the limitations of the interference count. Reduction to practice is a question of law that is reviewed de novo; underlying factual findings used to determine reduction to practice are reviewed for substantial evidence.
In Henkel I, the Federal Circuit held that the limitation at issue required “an appreciation by the inventors simply that the dissolution rate of the compressed region is greater than the dissolution rate of the other region.†Henkel Corp., 485 F.3d at 1375. In finding that P&G had appreciated this limitation, the Board relied on the P&G inventor testimony and January 1997 report evidence detailed above.
The Board found that the January 1997 report statement was an appreciation that the compressed region dissolved at a faster rate than the non-compressed region and concluded that the report corroborated the inventor’s testimony. Henkel interpreted the January 1997 report as meaning that the tablet’s dimple material and regular material released the product’s active ingredient at different rates; thus, Henkel argued that the statement does not show an appreciation of the differential dissolution rates of the tablet materials themselves.
Noting that its task was merely to determine whether the Board’s interpretation was supported by substantial evidence, the court held that it was. The court concluded that in light of the January 1997 report’s “numerous references to dissolution rates in general†and focus on testing the two-region dimple tablet, the Board’s interpretation was reasonable and thus supported by substantial evidence.
Important Dicta:
The court noted that the interpretation of the January 1997 report was a close call. However, even if it found that Henkel’s interpretation was also reasonable, the substantial evidence standard would compel affirmance of the Board’s decision. “We may not substitute our interpretation of the evidence for the Board’s reasonable inferences.†Midland Transp. Co. v. NLRB, 962 F.2d 1323, 1326 (8th Cir. 1992).
Josh Nightingale
560 F.3d 1286 (Fed. Cir. 2009)
Facts:
This case involves an interference proceeding between Henkel Corp. and Proctor & Gamble Co. (“P&Gâ€). Claim 1 of P&G’s U.S. Patent No. 6,399,564 is representative of the interference count: “A detergent tablet comprising a compressed portion and a non-compressed portion wherein . . . said compressed portion comprises a mould and dissolves at a faster rate than said non-compressed portion . . . .†P&G produced 1) P&G inventor testimony that he appreciated the limitation in the count requiring that the compressed region of the tablet dissolve at a greater rate and 2) a January 1997 P&G report which stated that there was a “slower release of NB-base from the dimple vs. regular tablets.â€
Procedural Posture:
In Henkel I, the Federal Circuit held that Henkel had reduced the interference count to practice no later than May 1997. Henkel Corp. v. Proctor & Gamble Co., 485 F.3d 1370, 1376 (Fed. Cir. 2007). On remand, the Board of Patent Appeals and Interferences held that P&G had reduced the interference count to practice in February 1997, predating Henkel’s May 1997 reduction to practice, and awarded P&G priority. Henkel appealed this holding.
Issue:
Underlying the Board’s holding that P&G had priority was the key factual determination that P&G appreciated by February 1997 the limitation in the count requiring that the compressed region of the tablet dissolve at a greater rate. The key issue is thus whether substantial evidence supports this factual finding by the Board.
Holding:
Because the Board’s decision is supported by substantial evidence, affirm and hold that P&G was correctly awarded priority.
Reasoning:
Reduction to practice requires that the inventor prove that he constructed the embodiment meeting all limitations of the interference count, determined the invention would work for its intended purpose, and appreciated that the embodiment worked and that it met all of the limitations of the interference count. Reduction to practice is a question of law that is reviewed de novo; underlying factual findings used to determine reduction to practice are reviewed for substantial evidence.
In Henkel I, the Federal Circuit held that the limitation at issue required “an appreciation by the inventors simply that the dissolution rate of the compressed region is greater than the dissolution rate of the other region.†Henkel Corp., 485 F.3d at 1375. In finding that P&G had appreciated this limitation, the Board relied on the P&G inventor testimony and January 1997 report evidence detailed above.
The Board found that the January 1997 report statement was an appreciation that the compressed region dissolved at a faster rate than the non-compressed region and concluded that the report corroborated the inventor’s testimony. Henkel interpreted the January 1997 report as meaning that the tablet’s dimple material and regular material released the product’s active ingredient at different rates; thus, Henkel argued that the statement does not show an appreciation of the differential dissolution rates of the tablet materials themselves.
Noting that its task was merely to determine whether the Board’s interpretation was supported by substantial evidence, the court held that it was. The court concluded that in light of the January 1997 report’s “numerous references to dissolution rates in general†and focus on testing the two-region dimple tablet, the Board’s interpretation was reasonable and thus supported by substantial evidence.
Important Dicta:
The court noted that the interpretation of the January 1997 report was a close call. However, even if it found that Henkel’s interpretation was also reasonable, the substantial evidence standard would compel affirmance of the Board’s decision. “We may not substitute our interpretation of the evidence for the Board’s reasonable inferences.†Midland Transp. Co. v. NLRB, 962 F.2d 1323, 1326 (8th Cir. 1992).
Josh Nightingale