Gregory v. Tsui

Informative decision only: persuasive authority, not binding precedent. When a party attacks an opponent's accorded benefit in an interference, a best-mode defect in the benefit application does not defeat its status as a constructive reduction to practice, because the constructive reduction to practice operates as an anticipating reference under § 102(g) and need only enable a single embodiment within the scope of the count. The Board also declined to equate a putative best-mode violation with abandonment, suppression or concealment under § 102(g), reasoning that a best-mode violation is the withholding of information that is by definition not essential to practice of the invention. No prior precedent directly addressed this issue: the Board notes that Cromlish v. D.Y., 57 USPQ2d 1318, 1319 (BPAI 2000), noted but did not resolve the problem of using an alleged best-mode defect to attack interference priority benefit. For the opposing party seeking to strip benefit, a best-mode attack cannot be used and a motion must be framed in terms of the count under 37 C.F.R. § 1.637(g), not the claims. For the party relying on a benefit application, it need not show best-mode compliance, and need only show disclosure that is presumed enabling for one embodiment within the count. The Board relied on Tofe v. Winchell, 645 F.2d 58 (CCPA 1981) (best mode is not a priority consideration), Fontjin v. Okamoto, 518 F.2d 610 (CCPA 1975), and distinguished Bigham v. Godtfredsen, 857 F.2d 1415 (Fed. Cir. 1988), and Hyatt v. Boone, 146 F.3d 1348 (Fed. Cir. 1998), as not presenting the best-mode question. LEGAL TEST OR STANDARD: A constructive reduction to practice is essentially an anticipating reference under § 102(g) against the count. The disclosure must adequately describe and enable a single embodiment within the count, and is presumed enabling absent a clear indication to the contrary. Best mode is not required. Section 102(g) also requires that the earlier inventor 'had not abandoned, suppressed, or concealed' the invention, and the Board declined to treat a best-mode violation as abandonment. The movant bears the burden, and the Wands factors for undue experimentation are illustrative, not mandatory. TRIGGERING FACTS: Tsui, the party attacked, moved to deny Gregory's accorded benefit in the 295 and 307 applications for the 933 vector count, alleging a best-mode violation of 35 U.S.C. 112[1] because Gregory allegedly knew or should have known that the cryptic E. coli promoter it identified was the wrong one. The attack focused on limitations of Gregory's claims, not on the count. Tsui had not filed a timely motion on the alleged best-mode violation, and did not expressly argue abandonment. KEY QUOTE: "We decline to equate a putative best-mode violation with abandonment for the purposes of § 102(g)." (Paper 100, p. 19) PRIOR PRECEDENT AFFECTED: Cromlish v. D.Y., 57 USPQ2d 1318, 1319 (BPAI 2000), which noted without resolving the best-mode problem, is now addressed. The Board distinguished Bigham v. Godtfredsen, 857 F.2d 1415, and Hyatt v. Boone, 146 F.3d 1348, and followed Tofe v. Winchell, 645 F.2d 58 (CCPA 1981), Fontjin v. Okamoto, 518 F.2d 610 (CCPA 1975), and Hillman v. Shyamala, 55 USPQ2d 1220 (BPAI 2000). It found In re Costello, 717 F.2d 1346 (Fed. Cir. 1983), not really on point. PRACTICE TIP: Do not move to deny interference benefit on best-mode grounds. Frame any benefit attack in terms of the count under 37 C.F.R. § 1.637(g), and put a facially complete case, including enablement evidence and analysis, in the opening motion, since a reply cannot fill gaps.