Narrative Opinion Summary
In a patent interference dispute between Invitrogen Corporation and Harvard College, the court addressed the priority of invention related to molecular cloning and mutant DNA polymerases. Invitrogen sought to overturn the United States Patent and Trademark Office's Board of Patent Appeals decision, which had awarded priority to Harvard, by arguing that it achieved actual reduction to practice (ARTP) of the invention before Harvard's filing date. The Board had declared Harvard's Tabor patent, filed on October 17, 1994, as prior art against Invitrogen's Chatterjee application, filed on September 8, 1995, and concluded that Invitrogen failed to demonstrate ARTP. Invitrogen filed lawsuits in both California and Massachusetts, with Harvard counterclaiming and filing a motion for summary judgment. The court, applying Federal Rule of Civil Procedure 56(c), assessed whether any genuine issues of material fact existed, ultimately granting summary judgment in favor of Harvard. The court determined that Invitrogen was precluded from introducing new evidence not presented during the interference proceedings, as it failed to demonstrate special circumstances warranting such inclusion. The court affirmed the Board's findings, concluding that Invitrogen did not meet the legal requirements for ARTP, thus upholding Harvard's priority of invention.
Legal Issues Addressed
Civil Action under 35 U.S.C. § 146subscribe to see similar legal issues
Application: The district court reviewed the interference proceedings de novo, but found that Invitrogen could not introduce evidence not presented to the Board, as it failed to prove special circumstances.
Reasoning: 35 U.S.C. § 146 does not specify when a district court may allow live testimony, but the Federal Circuit has clarified that parties in an interference must fully present their cases at the Board level...
Priority in Patent Interference Proceedingssubscribe to see similar legal issues
Application: The Board of Patent Appeals determined that Invitrogen failed to prove an actual reduction to practice of its invention before Harvard’s filing date, thus granting priority to Harvard.
Reasoning: The Board concluded that Invitrogen failed to prove an actual reduction to practice of the invention before Harvard’s filing date.
Requirement for Actual Reduction to Practicesubscribe to see similar legal issues
Application: The Court found that Invitrogen did not meet the legal standard for proving an actual reduction to practice, as it failed to demonstrate the creation and verification of the DNA molecule and polymerase capabilities.
Reasoning: Legally, the Court must evaluate whether the Board's factual findings constituted an ARTP. The Court concurs with the Board's legal conclusions, stating Chatterjee did not establish ARTP for either date claimed.
Summary Judgment Standard under Federal Rule of Civil Procedure 56(c)subscribe to see similar legal issues
Application: Harvard's motion for summary judgment emphasized that no genuine issue of material fact existed and that they were entitled to judgment as a matter of law, based on the Board's findings.
Reasoning: Summary judgment is appropriate if the Court, after this evaluation, finds no genuine issue of material fact and determines the moving party is entitled to judgment as a matter of law.