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Genentech, Inc. v. Chiron Corp.

Non-inventor's recognition of chemical reaction's utility did not inure to benefit of patent applicant where non-inventor was asked to analyze reaction for other reasons; thus, patent holder failed to establish that applicant reduced invention to practice before filing date of competing application.

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SCHALL, Circuit Judge.

This appeal stems from an interference between U.S. Patent Application Serial No. 06/506,078 (the “Lee application”), assigned to Genentech, Inc. (“Genentech”), and U.S. Patent Application Serial No. 06/922,199 (the “Barr application”), assigned to Chiron Corporation (“Chiron”). After the Board of Patent Appeals and Interferences (“Board”) awarded priority of invention to Chiron, see Lee v. Barr, Pat. Int. No. 102,208 (July 19, 1994) (Paper No. 176) (“Genentech I”), Genentech brought an action under 35 U.S.C. � 146 in the United States District Court for the Northern District of California. The district court conducted a bench trial, and, in due course, entered judgment in favor of Genentech. See Genentech, Inc. v. Chiron Corp., No. CV 94-03334 (N.D. Cal. June 24, 1999) (Amended Judgment). Chiron appeals this judgment, challenging the factual findings and legal conclusions of the district court. We reverse. We do so because we hold that Genentech failed to establish that the inventors on the Lee application reduced their invention to practice prior to the earlier effective filing date of the Barr application. Our holding is based on the conclusion that a non-inventor’s recognition of the utility of the invention of the Lee application did not inure to the benefit of the inventors.

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