Michael S. Brown, Joseph L. Goldstein, and Yuval Reiss v. Mariano Barbacid and Veeraswamy Manne

276 F.3d 1327, 61 U.S.P.Q. 2d (BNA) 1236, 2002 U.S. App. LEXIS 460
Court of Appeals for the Federal Circuit·Decided January 11, 2002·No. 586·Published·Cited by 29 cases

Opinions

RADER, Circuit Judge.

In an interference over a new assay to identify anti-cancer compounds, the United States Patent and Trademark Office Board of Patent Appeals and Interferences (Board) awarded priority to Mariano Bar-bacid and Veeraswamy Manne (collectively Barbacid) over Michael Brown, Joseph Goldstein, and Yuval Reiss (collectively Brown). Because the Board did not consider evidence that Brown conceived the invention before Barbacid reduced it to practice and diligently pursued the invention from the time of Barbacid’s reduction to practice through Brown’s filing date, this court vacates the award of priority to Barbacid and remands.

BACKGROUND

This case involves an interference between U.S. Patent No. 5,185,248 (the Bar-[1331] bacid patent) and U.S. patent application Serial No. 07/937,893 (the Brown application). The Barbacid patent and the Brown application both claim an assay for identifying new anti-cancer compounds that inhibit farnesyl transferase (FT), an enzyme involved in the control of cell growth. FT functions in the cell by adding farnesyl (a branched-chain polyunsaturated hydrocarbon alcohol intermediate of sterol biosyn-thesis) to a cysteine amino acid near one end of the protein chain, namely the car-boxy-terminus. An important protein susceptible to addition of farnesyl is “ras.” The farnesylation reaction activates the ras protein (which stimulates cell growth) by moving ras to the vicinity of the cell membrane. Once near the membrane, ras stimulates cell growth. Thus, ah FT inhibitor would reduce the amount of ras reaching the membrane and therefore reduce ras-stimulated growth (including “cancerous” growth).

The sole count in the interference provides:

A method for identifying a candidate substrate having the ability to inhibit a farnesyl transferase enzyme, comprising the steps of:
6. obtaining an enzyme composition comprising a farnesyl transferase enzyme that is capable of transferring a farnesyl moiety to a farnesyl acceptor substance;
7. admixing a candidate substrate with the enzyme composition and fame-syl pyrophosphate; and
8. determining the ability of the farne-syl transferase enzyme to transfer a farnesyl moiety to a farnesyl acceptor substrate in the presense of the candidate substance and in the ab-sense of the candidate substance.

OR

An assay for identifying compounds that inhibit ras oncogene activity, comprising:
6. reacting a protein or peptide substrate having a CAAX motif with farnesyl pyrophosphate and fame-syl-protein transferase in the presence of a test substrate, and
7. detecting wither the farnesyl residue is incorporated into the protein or peptide substrate, in which the ability of the test substance to inhibit ras oncogene activity is indicated by a decrease in the incorporation of the farnesyl residue into the protein or peptide substrate as compared to the amount of the farnesyl residue incorporated into the protein or peptide substrate in the absence of the test substrate.

Barbacid & Manne v. Brown, Goldstein & Reiss, Interference No. 103,586, slip op. at 2-3 (Bd. Pat. Appeals & Interferences May 30, 2000) {Board opinion) (emphasis added). In other words, the method of the count uses: (1) farnesyl transferase (FT); (2) farnesyl pyrophosphate, i.e., the source of farnesyl; (3) a “farnesyl acceptor substance” or “protein or peptide substrate having a CAAX motif,” i.e., ras or a peptide of ras containing the CAAX motif (which is farnesylated); and (4) a test or candidate substrate, which inhibits FT, and therefore, ras protein activity.

The Barbacid patent application was filed on May 8, 1990, and issued on February 9, 1993. The Brown application was filed on December 22, 1992, but was accorded the benefit of an earlier related application filed on April 18, 1990. Thus, Brown was the senior party. Barbacid, as the junior party, had the burden to prove [1332] priority by a preponderance of the evidence.

The Board found that Barbacid showed an actual reduction to practice no later than March 6, 1990. The Board also found that Brown did not show reduction to practice of the count before March 6, 1990. Specifically, the Board found that Dr. Yu-val Reiss’ September 20, 1989 FT experiment did not satisfy every limitation of the count because it did not include a test or candidate substance in the assay. The Board also discounted a September 25, 1989 experiment (which may have satisfied the count) because Dr. Reiss could not authenticate his lab notebooks and autora-diographs. Moreover Dr. Patrick Casey could not corroborate Dr. Reiss’ testimony and documents relating to the September 25 experiment.

Responding to a request for reconsideration, the Board declined to consider the testimony of Debra Morgan with respect to Brown’s earlier conception and reduction to practice. The Board found that Brown’s sole reference to Ms. Morgan in their opening brief was in a section of the Statement of Facts entitled “Brown’s Case for Diligence and Corroboration Thereof,” but not in the Argument section. Thus, the Board denied Brown’s request for reconsideration of its holding that Brown had not reduced the invention to practice before March 6, 1990. Accordingly, the Board awarded priority to Barbacid. Brown appealed.

DISCUSSION

Priority and its issues of conception and reduction to practice are questions of law predicated on subsidiary factual findings. Cooper v. Goldfarb, 154 F.3d 1321, 1327, 47 USPQ2d 1896, 1901 (Fed.Cir.1998). Accordingly, this court reviews without deference the Board’s legal conclusions on priority, conception, and reduction to practice, Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1376, 231 USPQ 81, 87 (Fed.Cir.1986), and reviews for substantial evidence the Board’s factual findings. Dickinson v. Zurko, 527 U.S. 150, 119 S.Ct. 1816, 144 L.Ed.2d 143 (1999); In re Gartside, 203 F.3d 1305, 1315, 53 USPQ2d 1769, 1775 (Fed.Cir.2000). Finally this court reviews the Board’s application of its permissive interference rules for an abuse of discretion. Abrutyn v. Giovanniello, 15 F.3d 1048, 1050, 29 USPQ2d 1615, 1617 (Fed.Cir.1994) (citing Gerritsen v. Shirai, 979 F.2d 1524, 1527-28, 24 USPQ2d 1912, 1915-16 (Fed.Cir.1992)).

I.

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Michael S. Brown, Joseph L. Goldstein, and Yuval Reiss v. Mariano Barbacid and Veeraswamy Manne, 276 F.3d 1327, 61 U.S.P.Q. 2d (BNA) 1236, 2002 U.S. App. LEXIS 460 (Fed. Cir. 2002).

276 F.3d 1327 (Michael S. Brown, Joseph L. Goldstein, and Yuval Reiss v. Mariano Barbacid and Veeraswamy Manne) — published by Counsel Stack Legal Research, free access to 12M+ legal documents.

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