Dawson v. Dawson
Addressing the issue of conception in an interference proceeding, the U.S. Court of Appeals for the Federal Circuit affirmed a decision by the U.S. Patent and Trademark Office Board of Patent Appeals and Interferences (Board), finding that disclosures related to the subject matter at issue were insufficient to prove a prior conception date where the disclosures failed to show that the inventor possessed a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice. Dawson v. Dawson, Case Nos. 12-1214, -1215, -1216, -1217 (Fed. Cir., March 25, 2013) (Bryson, J.) (Reyna, J., dissenting).
The two patents at issue covered a process for topically applying an antibiotic to the eye for treating eye infections. The patents issued in 2001 and 2003, respectively, based on a March 1999 application filed jointly by Drs. Chandler Dawson and Lyle Bowman, who assigned their rights to InSite Vision Inc. Prior to joining InSite, Dr. Dawson gave a presentation related to the topical use of the antibiotic azithromycin to treat eye infections at a 1997 conference of the World Health Organization (WHO). At the time, Dr. Dawson was employed by the University of California, San Francisco (UCSF). In 2007, UCSF provoked an interference by filing a patent application that generally copied the specification and claims from the two InSite patents and named Dr. Dawson as the sole inventor.
In the interference proceedings before the Board, UCSF attempted to prove that Dr. Dawson alone had conceived of the claimed inventions and had done so while employed at UCSF. UCSF primarily relied upon contemporaneous disclosures based on Dr. Dawson’s presentation at the 1997 WHO conference and accompanying documents. The Board found that UCSF had failed to prove sole conception by Dr. Dawson and that prior to his collaboration with Dr. Bowman at InSite, Dr. Dawson “did not fully appreciate how [his] idea was to be implemented in actual practice.” UCSF appealed.
The Federal Circuit affirmed the Board’s conclusion that UCSF failed to prove sole conception by Dr. Dawson. The Court reiterated that conception requires the “formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice the definition of conception.” The Court explained that conception is complete only when the idea is so clearly defined in the inventor’s mind that only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation.
The Federal Circuit found that the contemporaneous disclosures of the alleged conception showed only that Dr. Dawson had a general idea for a future research plan for developing a topical azithromycin treatment for eye infections. This finding was supported by a description in the disclosures of Dr. Dawson’s presentation as a “preliminary” statement about a “possibility” or “potential use” of a topical antibiotic eye infection treatment alongside a recommendation for continued work and a request to “report back” at the next meeting.
In response to UCSF’s contention that the Board improperly required a showing of reduction to practice in order to prove conception, the Federal Circuit noted that while conception does not require reduction to practice, the inventor must still possess an operative method for making the invention, emphasizing the difference between conceiving a way to make an idea operative and knowing that a completed invention will work for its intended purpose.