L’Oreal, S.A. appeals the judgment of the United States District Court for the District of Columbia, 40 USPQ2d 1425,
Background
This case involves an interference between U.S. patent application serial number 07/135,-666, filed by Walter P. Smith and Edward Pelle, which is assigned to Estee Lauder Inc., and U.S. patent application serial number 07/180,556, filed by Michel Hocquaux and Georges Rosenbaum, which is assigned to L’Oreal, S.A. 1 The applications are directed *590 to a composition for protecting skin from damage caused by ultraviolet (UV) light exposure or to its method of use. The sole count provides:
A composition for protecting skin from damage caused by exposure to ultraviolet light said composition comprising a sunscreen agent and copper 3’, 5’ diiso-propylsalieylate [ (CuDIPs) ] in a cosmetic carrier or a method for protecting skin from damage caused by exposure to ultraviolet light comprising apply [sic] to the skin an effective amount of the composition comprising a sunscreen agent and copper 3’, 5’ diisopropylsalicylate in a cosmetic carrier.
The ’666 application was filed on December 21, 1987, while the ’556 application was filed on April 12, 1988. Because L’Oreal had applied for a patent for the same invention in Luxembourg on April 13, 1987, however, it was given the benefit of that filing date and deemed the senior party. See 35 U.S.C. § 119 .(1994). Consequently, Estee Lauder was required to prove priority by preponderant evidence.
Estee Lauder first became interested in the potential, use of CuDIPs to boost the-Sun Protection Factor (SPF) in sunscreens in the summer of 1986. Dr. Walter Smith, Director of Estee Lauder’s Biological Research Department (BRD), requested that Edward Pelle, a senior scientist in the BRD, attend a conference bn copper .complexes in August 1986, which he did. The conference was held by Dr. John R.J. Sorenson of the University of Arkansas, who is reputed to be the world’s leading expert on CuDIPs.
Pelle spoke with Sorenson about the potential use of CuDIPs to reduce skin inflammation and to minimize damage caused by exposure to the sun. Upon his return, Pelle discussed the conference and Sorenson’s qualifications with Smith, and they agreed that Sorenson was their best source of Cu-DIPs. In September 1986, Pelle telephoned Sorenson and ordered two grams of CuDIPs for $20.00.
Later that month, Pelle received from Sor-enson two grams of material he believed to be CuDIPs (the “material”). He used the material to perform several experiments to test whether CuDIPs inhibited inflammation after UV light exposure. First, in November 1986, Pelle applied a template with two square-shaped openings to his arm. On one opening he applied isopropyl alcohol (IPA), while on the other he placed a solution of IPA mixed with the material. Pelle then exposed his arm to UV light, after which he applied the same solutions to the same openings a second time. Pelle found that the site treated with IPA only was red, whereas the site treated with IPA and the material was not. He then took a photograph of his arm, which he taped into his laboratory notebook. Pelle showed his arm to Smith and to Ken Marenus, who began working as laboratory manager and Pelle’s supervisor in the BRD that day, and the three discussed the results. Pelle then repeated his arm test, but this time he did not apply the material until after the UV exposure. He found that the material effectively reduced redness.
Pelle and Marenus then added the material to one of Estee Lauder’s SPF 6 sunscreen products. They mixed two different concentrations of the material to the sunscreen samples, with the lower (.3 millimolar) concentration labeled BRD 461, and the higher (3.0 millimolar) concentration labeled BRD 462. Marenus and Marie Randazzo, an Es-tee Lauder employee whose duties included obtaining and sending samples to contract laboratories for SPF testing, next filled out requests for biomedical testing on BRD 461 and 462. They sent the samples to Harrison Research Laboratories, an independent laboratory which both Estee Lauder and L’Oreal use, indicating the SPF range on which the test should focus.
In January 1987, Dr. Lynne Harrison, president and principal investigator of the SPF testing laboratory at Harrison Research, told Marenus the results of the testing on BRD 461 and 462, which were confirmed in a written report received later that month. Pelle and Marenus analyzed the results and determined that the addition of the material they believed was CuDIPs increased the SPF. Both Pelle and Marenus memorial *591 ized this determination in separate memoran-da to Smith.
Smith, Marenus, and Pelle then decided to expand testing to see whether CuDIPs was effective in boosting SPF in a broader range of sunscreens. Marenus telephoned Soren-son and ordered 100 more grams of CuDIPs for $500. It is undisputed for purposes of this appeal that this material was, in fact, CuDIPs. In late February 1987, Pelle prepared samples incorporating .3 millimolar of CuDIPs into SPF 15 (BRD 498), 25 (BRD 499), and 20 (BRD 500) sunscreens. Pelle also prepared a control sample (BRD 497) containing only SPF 15 sunscreen, which was necessary because Marenus’ earlier testing on SPF 15 had not shown an SPF boost.
On or about February 26, 1987, a request for biomedical testing was completed and given to Randazzo for BRD 497-500. On or about March 9,1987, she sent the samples to Harrison, accompanied by a cover letter, requesting SPF testing and telephonic notification of the test results. Pelle subsequently received a verbal report of partial results from Randazzo,' who would have received them from Harrison. The partial results are reflected in an undated page of notes in Pelle’s handwriting. The final written results were dated and received after April 13, 1987.
Pelle offered varying and indefinite testimony as to when he received the partial, verbal results. At trial, he claimed that he received them “in the early part of April”; more specifically, “around the first week' in April of 1987.” He also testified that he had requested the results by March 12, 1987, but they actually arrived “a .little bit after that.” At his deposition, taken two years before trial, however, Pelle testified that his best recollection was that he received the partial results sometime in “the spring of 1987.” Ultimately, the court found Pelle’s testimony lacking in credibility. Randazzo, on the other hand, simply did not recall when Harrison telephoned her with the partial results. Nor did any documentary evidence of hers reveal such date.
For her part, Harrison testified that all SPF testing was completed on BRD 497-500 by April 10,1987. She finished the BRD 497 and -498 testing before 2:00 p.m. on April 7, 1987. Under her normal practice, Harrison testified, she would have called Randazzo with the partial results on April 7, 1987. While she offered long distance telephone records showing a telephone call to Randaz-zo’s extension at 2:36 p.m. on that date, she did not recall making the call to Randazzo with the partial results. Harrison conceded, however, that she was working on other SPF testing for Estee Lauder during that period, so sbe could have called Randazzo with results from those tests. Harrison also testified that she would have notified Randazzo of the remaining results on BRD 499 and 500 by Friday, April 10, or at the latest by Tuesday, April 14, after the critical date.
Pelle testified that upon receiving the partial results from Randazzo, he calculated the means of the BRD 497 and 498 results, compared them, and concluded that CuDIPs was effective at boosting SPF. He also compared the results of BRD 499 against its nominal SPF and determined that they showed a higher SPF. He did not calculate a mean for the BRD 499 or 500 results. Pelle could not pinpoint when he performed these calculations and comparisons, however. Nor did any documentary evidence answer this question. Moreover, although Pelle shared these results with Marenus, Marenus could not say when this occurred.
Estee Lauder then filed the ’666 application. The United States Patent and Trademark Office declared an interference between the Estee Lauder and L’Oreal applications on December 6, 1989. Before the Board of Patent Appeals and Interfer-énces, Estee Lauder relied solely on the experiments leading up to and culminating in the BRD 461-62 tests to establish its reduction to practice. It did not rely at all on the BRD 497-500 tests, which it viewed as cumulative. Further, Estee Lauder did not attempt to establish that it was first- to. conceive the invention and then diligently reduce it to practice. The board found that Estee Lauder had failed to prove that the initial 2-gram sample it obtained from Sorenson was actually Cu-DIPs. Consequently, it held that Estee Lauder had not reduced its invention to *592 practice prior to April 13, 1987, and awarded priority to L’Oreal.
Estee Lauder then filed an action in the United States District Court for the District of Columbia, pursuant to 85 U.S.C. § 146 (1994). Section 146 actions have been described as a hybrid of an appeal and a trial de novo.
Case v. CPC Int’l, Inc.,
Discussion
The primary question before us is whether Estee Lauder established by a preponderance of the evidence that it successfully reduced its invention to practice before the April 13, 1987, critical date. If it did, then it is entitled to priority. 35 U.S.C. § 102(g) (1994);
Mahurkar v. C.R. Bard, Inc.,
Reduction to practice is ultimately a legal question, which is based on underlying factual determinations.
Pujikawa v. Wattanasin,
To prove actual reduction to practice, an inventor must establish that he “ ‘actually prepared the composition and knew it would work.’ ”
Hahn v. Wong,
Here, the" court found that prior to the critical date, Estee Lauder had conceived its invention, prepared the composition of the count, and sent the composition to be tested. The court also found that Harrison had completed all of the testing prior to the critical date. The rub appears, however, in the court’s finding that Estee Lauder failed to establish that the test results were reviewed or analyzed before April 13, 1987:
L’Oreal argues that Estee Lauder cannot show reduction to practice by April 13, 1987, because it cannot show that the test results for BRD 497-500 *593 were received- and analyzed by Estee Lauder prior to the critical date. Were the Court to agree that receipt and analysis of the results by the inventors was necessary to establish reduction to practice, L’Oreal would be correct. While Estee Lauder plainly had a well-supported hypothesis that CuDIPs boosted SPF, and prepared test samples meeting the elements of the count well before April 13, 1987, the evidence does not show that Estee Lauder’s scientists received or analyzed the results of BRD 498, 499, or 500 by that date.
40 USPQ2d at 1435. The court held that if the law required proof of receipt and recognition of success prior to the effective date, Estee Lauder could not prevail. But it concluded that there is no such requirement. It held that “the patent law is more concerned with whether the results of the tests submitted by the inventor in fact show success than whether this success was -recognized by the inventor prior to the critical date.” Id. at 1436. Thus, because the tests were completed by April 13, 1987, and because they ultimately demonstrated that CuDIPs actually worked for its intended purpose, the court held that Estee Lauder reduced its invention to practice before L’Oreal.
On appeal, L’Oreal does not challenge the board’s findings. Nor does it challenge the adequacy of the testing or the ultimate success of the testing. Indeed, L’Oreal accepts that Estee Lauder’s test results would be adequate to establish a reduction to practice, had they been received, analyzed, and success determined prior to the critical date. L’Oreal contends, rather, that it was burned by the trial court’s erroneous conclusion of law that Estee Lauder did not have to prove receipt and analysis of the BRD 497-500 test results before the critical date.
Because we see no clear error in the court’s thorough and well-supported factual findings, 2 we are left to answer a single question of law: where testing is required to establish utility, must there be some recognition of successful testing prior to the critical date for an invention to be reduced to practice, or is it only necessary that the testing be completed before the critical date and ultimately prove successful, regardless of when that success is appreciated or recognized? We hold that the law requires the former.
Hahn
requires that in addition to preparing a composition, an inventor must establish that he “ ‘knew it would work,’ ” to reduce the invention to practice.
“It is well-settled that conception and reduction to practice cannot be established nunc pro tunc. There must be
contemporaneous recognition and appreciation
of the invention represented by the counts.”
Breen v. Henshaw,
Similarly,
Langer v. Kaufman,
In ruling that no recognition of successful testing is required before the critical date, the district court here relied on
Scott v. Finney,
Reese,
on the other hand, is a more formidable obstacle. There, Hurst had his laboratory assistant, Howerton, perform certain tests on June 13, 1969. Howerton sent the test samples for analysis and received the successful results June 27, 1969. The board held that reduction to practice occurred on June 13, the test date, not June 27, the date Howerton received the results.
We agree with -L’Oreal, therefore, that when testing is necessary to establish utility, *595 there must be recognition and appreciation that the tests were successful for reduction to practice to occur. Here, that time did not arrive until Pelle received the test results, calculated the mean of the BRD 497 and 498 results and compared them, as well as compared the BRD 499 and 500 test results to their nominal SPFs. Only then did Estee Lauder determine that CuDIPs successfully boosted SPF values. Estee Lauder has not established that these events unfolded before April 13,1987.
Estee Lauder argues, however, that there was no need for it to receive and analyze the BRD 498-500 test results and determine whether they were successful because they already fully recognized the utility of the compositions. For this proposition, Estee Lauder relies on Pelle’s arm tests and the BRD 461-62 test results. But Estee Lauder failed to establish that CuDIPs was the material used in these tests. It cannot rely upon tests performed on a composition that failed to meet the elements of the count to demonstrate that the composition works for its intended purpose.
Perhaps recognizing the flaws in this argument, Estee Lauder argues alternatively that the “activities and knowledge of Dr. Harrison and Randazzo inure to the benefit of the inventors and prove reduction to practice prior to the critical date.” Estee Lauder cites no evidence that either Randazzo or Harrison was in a position to judge the success of the test results; it relies only on the arguments of counsel. But, “arguments of counsel cannot take the place of evidence lacking in the record.”
Knorr,
Conclusion
Accordingly, the judgment of the United States District Court for the District of Columbia is reversed, and priority is awarded to L’Oreal.
COSTS
Each party shall bear its own costs.
REVERSED.
Notes
. For ease of reference, we refer to Smith and Pelle as Estee Lauder and to Hocquaux and *590 Rosenbaum as L’Oreal, except where otherwise noted.
. Estee Lauder challenges as clearly erroneous two of the court's findings: (1) that the BRD 498-500 test results were not actually received by Estee Lauder before the critical date, and (2) that it had not established that the two grams of material initially obtained from Sorenson, and used in BRDs 461-62, was CuDIPs. Because there is ample evidence to support these findings and because we are not left with the definite and firm conviction that a mistake has been made, we disagree.
See Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick Co.,