Dawson v. Dawson and Bowman
710 F.3d 1347
Fed. Cir.2013Background
- Dawson disclosed a topical azithromycin eye formulation at a 1997 WHO conference while employed by UCSF.
- WHO documents described topical azithromycin challenges and potential delivery vehicles, including Durasite, with efficacy and dosing to be determined.
- Dawson collaborated with InSite’s Bowman and UCSF’s Chern and Leiter to develop a topical azithromycin formulation; Leiter prepared an azithromycin ointment using a petroleum depot.
- Dawson, Bowman, and Leiter later filed a joint patent application; the '113 and '443 patents issued to InSite; UCSF then sought interfereences alleging Dawson conceived before joining InSite.
- Board found UCSF failed to prove sole conception by Dawson before March 1999 for both interference counts ('719 and '729).
- This court affirmed the Board’s conception ruling; cross-appeals by InSite were dismissed as improper, with costs borne by each party.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Dawson had sole conception before March 1999 | UCSF contends Dawson conceived the invention prior to InSite collaboration. | InSite argues conception occurred only with Bowman’s involvement at InSite. | Board’s conclusion upheld; UCSF failed to prove sole conception. |
| Whether contemporaneous disclosures (WHO documents) establish conception | WHO Report/document disclose a definite and complete idea. | Disclosures are preliminary and not a definite, permanent idea; require more. | Contemporaneous disclosures insufficient to prove conception. |
| Whether Chern-Leiter ointment evidence supports reduction to practice or conception | Ointment work corroborates Dawson’s conceived invention. | Ointment work is non-controlled experimentation and not tied to Dawson’s conception. | Board properly discounted Chern evidence as supporting reduction to practice rather than sole conception. |
Key Cases Cited
- Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367 (Fed. Cir. 1986) (conception requires a definite and permanent idea; corroboration needed)
- Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223 (Fed. Cir. 1994) (conception requires a definite and permanent idea with supportive evidence)
- In re Jolley, 308 F.3d 1317 (Fed. Cir. 2002) (listing broader subject matter does not defeat conception of claimed invention)
- Creative Compounds, LLC v. Starmark Labs., 651 F.3d 1303 (Fed. Cir. 2011) (speculation about method cannot substitute for conception evidence)
- Invitrogen Corp. v. Clontech Labs., Inc., 429 F.3d 1052 (Fed. Cir. 2005) (conception includes the inventor’s possession of operative method)
- Abbott Laboratories v. Baxter Pharm. Prods., Inc., 334 F.3d 1274 (Fed. Cir. 2003) (effective dosage discussions impact conception analysis)
- Dow Chem. Co. v. Astro-Valcour, Inc., 267 F.3d 1334 (Fed. Cir. 2001) (scientific disclosures supporting conception)