X

Thank you for sharing!

Your article was successfully shared with the contacts you provided.

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.

 
Reprints & Licensing
Mentioned in a Law.com story?

License our industry-leading legal content to extend your thought leadership and build your brand.

More From ALM

Premium Subscription

With this subscription you will receive unlimited access to high quality, online, on-demand premium content from well-respected faculty in the legal industry. This is perfect for attorneys licensed in multiple jurisdictions or for attorneys that have fulfilled their CLE requirement but need to access resourceful information for their practice areas.
View Now

Team Accounts

Our Team Account subscription service is for legal teams of four or more attorneys. Each attorney is granted unlimited access to high quality, on-demand premium content from well-respected faculty in the legal industry along with administrative access to easily manage CLE for the entire team.
View Now

Bundle Subscriptions

Gain access to some of the most knowledgeable and experienced attorneys with our 2 bundle options! Our Compliance bundles are curated by CLE Counselors and include current legal topics and challenges within the industry. Our second option allows you to build your bundle and strategically select the content that pertains to your needs. Both options are priced the same.
View Now

African Legal Awards (AFLA) 2022

September 02, 2022
Johannesburg

The African Legal Awards recognise exceptional achievement within Africa s legal community during a period of rapid change.


Learn More

China Law & Practice Awards (CLPA) 2022

September 08, 2022
Beijing

The annual China Law & Practice Awards is the jurisdiction's most prestigious legal awards ceremony that applauds China's elite.


Learn More

Texas Legal Awards (TXLA) 2022

September 14, 2022
Dallas, TX

The Texas Lawyer honors attorneys and judges who have made a remarkable difference in the legal profession in Texas.


Learn More

Litigation Associate


A well-respected regional law firm that has represented businesses in Tampa Bay for decades is seeking a commercial litigation associate to ...


Apply Now ›

NOTICE OF VACANCY -JUVENILE COURT JUDGE-GEORGIA


The Superior Court of Fulton County, Atlanta JudicialCircuit is soliciting applicants for the appointment of a full- time circuit-wide juven...


Apply Now ›

PARALEGAL - NEW YORK


Downtown A/V rated Plaintiff's personal injury law firm seeks paralegal with experience in pleadings, motions, discovery, calendar, mediatio...


Apply Now ›

MONTGOMERY MCCRACKEN WALKER & RHOADS LLP

08/15/2022
NJLJ Web

Montgomery McCracken Walker & Rhoads LLP wants to announce the Happy Retirement, Honorable Joel Rosen!


View Announcement ›

DEASEY, MAHONEY & VALENTINI, LTD.

08/08/2022
TLI Web

DEASEY MAHONEY & VALENTINI LTD is proud to announce that Lauren M. Steins and Leanna B. Ruotanen have been named Partners of the firm.


View Announcement ›

PARRETT, PORTO, PARESE & COLWELL, P.C.

08/08/2022
CLT Web

Parrett, Porto, Parese & Colwell, P.C. welcomes attorneys Alison L. Broad and Andrew I. Schaffer as principals of the firm.


View Announcement ›