Goeddel v. Sugano, No. 2009-1156, 1157 (Fed. Cir. Sept. 7, 2010).

This consolidated appeal was from two related patent interference priority contests between two parties, "Sugano" and "Goeddel," decided by the Board of Patent Appeals and Interferences of the USPTO ("The Board"). The Board held that Sugano was entitled the benefit of the filing date of its initial Japanese application and awarded Sugano priority in both interferences. The Federal Circuit reversed, concluding that the Japanese application did not establish constructive reduction to practice to establish priority.

The technology at issue relates to a modified DNA sequence for expressing a protein of therapeutic use. The issue on appeal was whether the Japanese application describes and enables the invention, the modified DNA sequence that produces the therapeutically relevant protein, in order to establish priority to the invention by reduction to practice. Sugano conceded that the Japanese application does not explicitly describe the modified DNA sequence expressing the protein or suggest using the modified sequence to express the particular protein, but argued that based on the DNA sequence and a reference disclosed in the Japanese application, a person of ordinary skill in the art would have immediately understood the modified DNA sequence that expresses the relevant protein.

The Federal Circuit found this disclosure insufficient to constructively reduce the invention to practice and establish priority. "[C]onstructive reduction to practice is not a question of whether one skilled in the art might be able to construct the patentee's device from the teachings of the disclosure.... Rather, it is a question of whether the application necessarily discloses that particular device." Although experts for both sides agreed that "a skilled person 'could' identify the boundary" defining the partial sequence based on the reference, "the Japanese application does not describe the subject matter of the interference counts," the modified DNA sequence and the protein it encodes.

"Section 112, in the context of interference priority, requires that the subject matter of the counts be described sufficiently to show that the applicant was in possession of the invention." The fact that the modified DNA sequence "could have been 'envisioned' does not establish constructive reduction to practice.... The question is not whether one skilled in this field of science might have been able to produce [the protein] by building upon the teachings of the Japanese Application, but rather whether that application conveyed to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date." Thus, the Federal Circuit found that the Board erred in its decision that the Japanese Application constituted constructive reduction to practice, and its award of priority to Sugano was reversed.

A copy of the opinion can be found here.