United States Court of Appeals for the Federal Circuit
2006-1542
(Interference No. 105,174)
HENKEL CORPORATION,
Appellant,
v.
THE PROCTER & GAMBLE COMPANY,
Appellee.
Rudolf E. Hutz, Connolly Bove Lodge & Hutz LLP, of Wilmington, Delaware, argued
for appellant. With him on the brief were Robert G. McMorrow, Jr., and Aaron R. Ettelman.
Of counsel was Mark E. Freeman.
Mark A. Charles, The Procter & Gamble Company, of Cincinnati, Ohio, argued for
appellee.
Appealed from: United States Patent and Trademark Office, Board of Patent Appeals
and Interferences
United States Court of Appeals for the Federal Circuit
2006-1542
(Interference No. 105,174)
HENKEL CORPORATION,
Appellant,
v.
THE PROCTER & GAMBLE COMPANY,
Appellee.
__________________________
DECIDED: May 11, 2007
__________________________
Before GAJARSA, LINN, and MOORE, Circuit Judges.
LINN, Circuit Judge.
Henkel Corporation (“Henkel”) appeals from a judgment by the United States
Patent & Trademark Office Board of Patent Appeals and Interferences (“Board”)
awarding priority in Interference No. 105,174 to the Procter & Gamble Company
(“Proctor & Gamble”). Because the Board legally erred in imposing a requirement for
reduction to practice not warranted by the language of the interference count, and
because the Board’s factual findings support reduction to practice under the correct
requirements of the count, we vacate and remand.
I. BACKGROUND
Henkel and Procter & Gamble are competing manufacturers of dishwashing
detergent tablets. This appeal concerns detergent tablets that are divided into two
regions: a “compressed” region, and a “solidified solution or melt” region, wherein the
compressed region dissolves “at a faster rate” than the solidified region. Henkel Corp.
v. Proctor & Gamble Co., Paper No. 115, Patent Interference No. 105,174, slip op. at 1–
2 (B.P.A.I. May 3, 2006) (“Interference Opinion”). Procter & Gamble’s U.S. Patent No.
6,339,564 (the “’564 patent”) and Henkel’s U.S. Patent Application Nos. 09/446,434 and
09/446,578 (respectively, the “’434 application” and “’578 application”) all claim such
tablets, also known as “ring tabs.”
A. Henkel’s Development of Two-Region Detergent Tablets
As we discuss below, see infra Part I.B, the outcome of this appeal depends on
Henkel’s activities towards the development of ring tabs prior to Procter & Gamble’s
priority date of November 26, 1997. The activities relevant to this appeal are
summarized as follows.
By April 1997, Dr. Thomas Holderbaum, one of the inventors named on Henkel’s
applications, had conceived of a melt-filled ring tab and had directed a laboratory
technician, Oliver Kurth, to make and test a series of “eighteen melt compositions to be
used as a filling.” Kurth formulated each composition, tested the physical properties of
each, and designated four samples as suitable for testing as a melt filling in a ring tab.
Holderbaum then directed another laboratory technician, Thomas Schliwka, to fill ring
tabs with one of the melt compositions Kurth had identified. In a declaration submitted
to the Board, Holderbaum averred that he “supervised Mr. Kurth and Mr. Schliwka and
conferred with them on virtually a daily basis and was well aware of their activities and
results.”
At Holderbaum’s direction, Schliwka tested the ring tabs by putting them in a
dishwasher, running the prewash and wash cycles, and periodically recording the
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weights of the tabs. Schliwka visually observed that the melt region of the tablet he
tested “does not dissolve in the prewash cycle” of the dishwasher. The compressed
region of the same tablet lost approximately 8 grams out of 29 grams. Schliwka
recorded his observations in a laboratory notebook, the relevant portions of which were
submitted to the Board.
Another Henkel employee, Mrs. Marica Nejtek, performed additional testing. On
April 15, 1997, Nejtek tested the solubility of four types of detergent tablets, including
ring tabs of the type Schliwka tested, as well as similar ring tabs formed without a melt
region. Nejtek found that ring tabs with a melt region lost a smaller percentage of their
weight than those without a melt region during a prewash cycle of fixed length and
temperature. Nejtek’s supervisor, Dr. Peter Jeschke, testified that he reported the
results of Nejtek’s testing in a meeting in late April or May 1997 that was attended by
three of the named inventors.
B. Procedural History
On November 5, 2003, the Board declared an interference between Procter &
Gamble’s patent and Henkel’s applications. The interference designated Procter &
Gamble as the senior party based on its patent’s priority date of November 26, 1997; it
designated Henkel as the junior party based on an accorded priority date of December
30, 1997, the date of Henkel’s corresponding German patent applications. Count 2 of
the interference 1 reads as follows:
1
Count 2 is the sole count in the interference. The Board redeclared the
interference with Count 2 substituted for the original Count 1. See Interference Opinion,
slip op. at 5, ¶ 9 & n.1.
2006-1542 3
A tablet according to claim 1 of U.S. Patent No. 6,339,564
or
A tablet according to claim 41 of U.S. Application No. 09/446,434
or
A tablet according to claim 44 of U.S. Application No. 09/446,578.
Id., slip op. at 5, ¶ 9. Claim 1 of the ’564 patent reads as follows:
A detergent tablet comprising a compressed portion and a non-
compressed portion wherein:
a) said compressed portion comprises a mould and dissolves at a
faster rate than said non-compressed portion on a weight by weight
basis, measured using a SOTAX dissolution test method;
b) said non-compressed portion is in solid, gel or liquid form;
c) said non-compressed portion is delivered into said mould of said
compressed portion; and
d) said non-compressed portion is partially retained within said
mould; and wherein said non-compressed portion is affixed to said
compressed portion by forming a coating over the non-compressed
layer to secure it to the compressed portion or by hardening.
’564 patent, claim 1. Claim 41 of Henkel’s Application No. 09/446,434 reads as follows:
A detergent tablet comprising a compressed region and solidified solution
or melt region wherein:
a) the compressed region comprises a recess and the dissolution
rate of the compressed region is greater than the dissolution rate of
the solidified solution or melt region;
b) the solution or melt region is delivered onto the recess and the
solidified solution or melt region is at least partially retained within
the recess;
c) the solidified solution or melt region is affixed to the compressed
region by hardening; and
d) the solidified solution or melt region comprises no more than
40% of the surface of the detergent tablet.
Interference Opinion, slip op. at 6, ¶ 11. Claim 44 of Henkel’s Application No.
09/446,578 reads as follows:
A detergent tablet comprising (a) a compressed region containing an
active detergent ingredient, and (b) a solidified melt or solution region
comprising an active detergent ingredient, wherein the tablet as a whole
dissolves in less than 40 minutes in a dishwashing machine, wherein the
dissolution rate of the compressed region is greater than the dissolution
rate of the solidified melt or solution region, wherein the solidified melt or
solution region is solidified in a recess formed in the compressed portion,
2006-1542 4
and wherein the solidified melt or solution region comprises no more than
40% by volume of the detergent tablet.
Id., slip op. at 6, ¶ 12.
On May 3, 2006, the Board issued its decision and awarded priority against
Henkel. In the interference proceeding, Henkel did not attempt to allege conception
coupled with reasonable diligence to a reduction to practice; rather, it argued that it had
both conceived and reduced the invention to practice before Procter & Gamble’s
constructive reduction to practice date of November 19, 1997. See 35 U.S.C. § 102(g).
The parties disputed one aspect of the construction of the interference count, the
meaning of the term “dissolution rate.” Procter & Gamble argued that in order to
measure the comparative dissolution rates, samples of the compressed and non-
compressed regions had to be apportioned into equal weights and tested at a constant
temperature in separate compartments. Henkel argued that it was sufficient to
demonstrate that a greater weight of the compressed region dissolved than of the melt
region, a method that the Board characterized as “calculat[ing]” the dissolution rate “on
a weight-by-weight basis.” See Interference Opinion, slip op. at 38.
For purposes of the interference, the Board applied Henkel’s methodology, but it
nonetheless concluded that Henkel had failed to carry its burden of showing that it had
conceived and reduced to practice before Procter & Gamble. Id., slip op. at 39 & n.10.
In particular, it concluded that Henkel had failed to demonstrate that its named inventors
had “appreciate[d] that which [t]he[y] ha[d] invented” contemporaneously with their
conception and reduction to practice. Invitrogen Corp. v. Clontech Labs., 429 F.3d
1052, 1063 (Fed. Cir. 2005), quoted in Interference Opinion, slip op. at 40.
2006-1542 5
Accordingly, the Board denied Henkel’s Substantive Motion No. 4 for judgment
on priority, awarded priority to Procter & Gamble, and denied Procter & Gamble’s
substantive motions regarding priority and inventorship as moot.
Henkel appeals. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A).
II. DISCUSSION
A. Standard of Review
“Priority, conception, and reduction to practice are questions of law which are
based on subsidiary factual findings.” Cooper v. Goldfarb, 154 F.3d 1321, 1327 (Fed.
Cir. 1998). “Accordingly, we review de novo the Board’s legal conclusions with respect
to priority, conception, and reduction to practice . . . , and we review factual findings by
the Board for substantial evidence.” Singh v. Brake, 317 F.3d 1334, 1340 (Fed. Cir.
2002) (citing Dickinson v. Zurko, 527 U.S. 150 (1999)).
“To succeed in an interference proceeding . . . , a party that does not have the
earliest effective filing date needs only to demonstrate by a preponderance of the
evidence that it was the first to invent if the two patents or applications at issue were co-
pending before the PTO,” as they were in this case. Eli Lilly & Co. v. Aradigm Corp.,
376 F.3d 1352, 1365 (Fed. Cir. 2002).
B. Priority
On appeal, Henkel challenges the Board’s findings as to reduction to practice,
which were largely adopted from the Board’s consideration of conception. As the Board
recognized, one requirement for a showing of actual reduction to practice is that “an
inventor must prove that he contemporaneously appreciated an embodiment that met all
the limitations of the interference count.” Interference Opinion, slip op. at 51 (citing
2006-1542 6
Cooper v. Goldfarb, 240 F.3d 1378, 1386 (Fed. Cir. 2001)). The specific question
presented in this appeal is whether Henkel’s inventors appreciated that their sample
detergent tablets met the dissolution rate limitation of the interference count.
The parties first dispute the scope of the count. As the Board explained, Proctor
& Gamble advocates a construction of the count in which “the compressed and non-
compressed regions tested must be of equal weight and tested at constant temperature
in separate compartments.” Interference Opinion, slip op. at 38. As for Henkel, the
Board summarized Henkel’s position as “allow[ing] for the dissolution rate to be
calculated on a weight-by-weight basis.” Id. For purposes of its decision, the Board
stated that it accepted Henkel’s purported definition. Id., slip op. at 38–39. However,
the Board burdened Henkel with showing that its inventors and lab technicians had
tested or calculated specific dissolution rates. E.g., id., slip op. at 19–20, ¶ 59 (“Mr.
Schliwka’s observation that the core did not dissolve in the prewash appears to be a
visual observation and is not construed as implying that he specifically measured the
rate of dissolution of the compressed portion and the melt region before and directly
after the prewash cycle.”); id., slip op. at 45 (“Neither Dr. Holderbaum nor Mr. Schliwka
testify that they understood in 1997 that the data reported on page 104 of Mr.
Schliwka’s notebook indicates that the compressed region of the tablet dissolved at a
faster rate than the non-compressed region.”).
2006-1542 7
We agree with Henkel that an explicit calculation or measurement of quantitative
dissolution rates is unnecessary. 2 The count itself does not require specific ranges of
dissolution rates; it simply requires that the dissolution rate of the compressed region be
“greater” than the dissolution rate of the other region. Id., slip op. at 5–6. This accords
with the descriptions of the invention in both the Procter & Gamble patent and Henkel
applications. Both documents describe a multicomponent tablet with components that
dissolve during different parts of a dishwasher cycle. E.g., ’564 patent, col. 3, ll. 2–6
(“This difference in rate of dissolution means that components of the compressed and
non-compressed portions can be delivered to the wash water at different points in the
washing or rinsing cycle of the washing machine.”); ’464 application at 8, ll. 16–19 (“By
adopting . . . measures for delaying dissolution [of one region of a tablet], certain
ingredients, for example, are only released in the final rinse cycle which affords further
advantages in regard to cleaning performance.”). By imposing a requirement to show
appreciation of specific dissolution rates, the Board incorrectly held Henkel to a more
stringent standard than warranted by the interference count. This constitutes legal
error. The correct requirement of the count calls for a showing of an appreciation by the
inventors simply that the dissolution rate of the compressed region is greater than the
dissolution rate of the other region.
Examining the record under the correct standard, the Board’s findings establish
that Henkel had produced two-region tablets in which one region dissolved more than
the other after the same period of time in the same dishwasher. Indeed, Schliwka’s
2
Although Henkel’s Substantive Motion No. 4 before the Board includes a
rough calculation of dissolution rates, Henkel does not concede that a quantitative
calculation of dissolution rates is required.
2006-1542 8
tests indicated that at least one of Henkel’s sample tablets had a melt region that did not
dissolve at all during a prewash cycle in which the compressed region had lost 8 out of
29 grams. Without further measurement, this is sufficient to demonstrate that Henkel
made a tablet meeting the limitations of the count.
Moreover, Schliwka’s observations, coupled with the record evidence of his
interactions with Holderbaum, suffice to demonstrate appreciation of the different
dissolution rates. As a matter of law, we do not require that a junior party in an
interference demonstrate that it recognized the exact language of the ultimate count—
only the subject matter of the invention. See Mycogen Plant Sci., Inc. v. Monsanto Co.,
243 F.3d 1316, 1336 (Fed. Cir. 2001) (holding that there was sufficient appreciation
when an inventor recognized a process in terms of codons—groups of three
nucleotides—instead of the ultimately claimed nucleotides). This is not a case in which
there is a significant danger that the inventors unwittingly and accidentally created
something new; rather, they set out to design detergent tablets with a particular
structure and did so, and the only question is whether they appreciated that the tablets
met one limitation of the interference count. Schliwka’s direct visual observation is
enough to demonstrate that the tablet met the “faster rate” limitation.
Schliwka, of course, is not an inventor. However, Holderbaum’s statements
demonstrate that he was aware of Schliwka’s results. In his own words, he “supervised
. . . Mr. Schliwka and conferred with [hi]m on virtually a daily basis and was well aware
of [his] activities and results.” Interference Opinion, slip op. at 11, ¶ 29 (emphasis
added). Holderbaum made this statement in the specific context of Schliwka’s
recognition of the dissolution rates: “[Schliwka] tested the Ring tabs . . . and found that
2006-1542 9
the Ring tab partially dissolved, but that the solidified melt filling did not dissolve.” Id. It
is true that the declarations submitted to the Board do not detail a specific conversation
or explicitly aver that the inventors appreciated the specific limitation at the time of
Schliwka’s experiments, but such a formulaic affirmation is unnecessary under the facts
of this case. The limitation in question is a discernible property of the invention that was
directly observed by a technician working under the close supervision of one of the
inventors. To require a more specific declaration than Henkel has proferred would be to
undermine our holding in Mycogen that an inventor can demonstrate appreciation
without enunciating the precise language of the interference count. See 243 F.3d at
1336.
C. Corroboration
We have held that because appreciation depends on “an inventor’s subjective
beliefs about his invention,” an inventor claiming priority must put forward “objective
evidence to corroborate [his] testimony concerning his understanding of the invention.”
Invitrogen, 429 F.3d at 1065. In other words, “it is not enough that a party adduce
evidence that objective test results comport with an inventor’s testimony concerning his
state of mind. Rather, there must also be evidence that the junior party timely
interpreted or evaluated the results, and understood them to show the existence [of] the
invention.” Id.
Here, the objective test results that Schliwka contemporaneously recorded in his
notebook suffice to show that Schliwka understood the existence of the invention. As
discussed above, Schliwka made and recorded a direct visual observation that the
tablets met the limitations of the count; there was no need for additional “interpret[ation]
2006-1542 10
or evaluat[ion]” of the test results. Moreover, the evidence shows that Schliwka
communicated his understanding to Holderbaum. Both Schliwka and Holderbaum
testified that they worked closely together and that Holderbaum was aware of
Schliwka’s results. In addition, Nejtek’s testing confirms the existence of the invention,
and Dr. Jeschke testified that he reported her results to a group of inventors, including
Holderbaum, no later than May 1997. This non-inventor testimony corroborates Dr.
Holderbaum’s statement that
I recall Dr. Jeschke’s report to our weekly meeting no later than May 1997,
that his laboratory results indicated that the tablets possessed the
expected solubility and cleaning characteristics and I recognized at that
time that not only were solubility and physical properties of the Ring tabs
and their components as we had conceived, but that the inventions
worked for their intended purpose. I have reviewed the laboratory
notebook pages of Marica Nejtek . . . , and I have determined that the
recorded results confirm my recollection.
Interference Opinion, slip op. at 12, ¶ 32. Thus, the objective evidence and inventor
testimony, taken together, confirm that the named inventors were aware of their
technicians’ test results and thereby appreciated the disputed limitation of the count
prior to the critical date.
III. CONCLUSION
For the foregoing reasons, we conclude that the Board erred when it held that
Henkel failed to demonstrate that the inventors appreciated a detergent tablet having a
compressed region that dissolved faster than a non-compressed region. Accordingly,
we vacate the Board’s denial of Henkel’s Substantive Motion No. 4, the dismissal as
moot of Procter & Gamble’s motions, and the entry of judgment against Henkel. We
remand to the Board for further proceedings consistent with this opinion.
VACATED and REMANDED
2006-1542 11
COSTS
Costs are awarded to Henkel.
2006-1542 12