United States Court of Appeals for the Federal Circuit
2008-1447
(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 Mark E. Freeman, and Aaron R.
Ettelman.
Mark A. Charles, The Proctor & 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
2008-1447
(Interference No. 105,174)
HENKEL CORPORATION,
Appellant,
v.
THE PROCTER & GAMBLE COMPANY,
Appellee.
Appeal from the United States Patent and Trademark Office, Board of Patent Appeals
and Interferences.
__________________________
DECIDED: March 18, 2009
__________________________
Before LINN, PROST, and MOORE, Circuit Judges.
LINN, Circuit Judge.
Henkel Corporation (“Henkel”) appeals from a final decision of the Board of
Patent Appeals and Interferences (“the Board”), Henkel Corp. v. Procter & Gamble Co.,
Patent Interference No. 105,174 (B.P.A.I. Mar. 28, 2008) (“Board Decision”), which
awarded priority of invention to The Procter & Gamble Company (“P&G”). Because the
Board’s decision is supported by substantial evidence, we affirm.
I. BACKGROUND 1
The technology at issue in this case relates to two-region dishwasher detergent
tablets having certain properties. Claim 1 of P&G’s U.S. Patent No. 6,399,564 is
representative of Count 2, the only count at issue in the interference:
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 onto 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.
At issue in this appeal is limitation a), which requires that the compressed portion of the
tablet dissolve at a faster rate than the non-compressed portion. In Henkel Corp. v.
Proctor & Gamble Co., 485 F.3d 1370, 1375 (Fed. Cir. 2007) (“Henkel I”), we rejected
the Board’s overly restrictive interpretation of the limitation and concluded that the
limitation required “an appreciation by the inventors simply that the dissolution rate of
the compressed region is greater than the dissolution rate of the other region.” We also
concluded that Henkel had demonstrated an appreciation of this disputed limitation no
later than May 1997. Id. at 1376. Accordingly, we vacated the Board’s denial of
Henkel’s motion for priority as well as the Board’s denial (as moot) of P&G’s motions for
priority, and remanded to the Board for further proceedings. See id.
1
This is the second appeal in this case. In Henkel Corp. v. Proctor &
Gamble Co., 485 F.3d 1370 (Fed. Cir. 2007) (“Henkel I”), we discussed at length both
the background of the technology at issue and the procedural posture leading to our
vacatur and remand of the Board’s decision. We omit the bulk of those details in this
opinion, discussing only what is relevant for disposition of this appeal.
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On remand, the Board entertained P&G’s motions for priority and held, based on
the evidence of record, that “P&G has proved by at least a preponderance of the
evidence that it made, and at least one inventor appreciated, an embodiment within the
scope of Count 2, the sole count in the interference, prior to Henkel’s earliest reduction
to practice.” Board Decision at 3. Consequently, the Board awarded priority of
invention to P&G.
Henkel timely appealed. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
II. DISCUSSION
A. Standard of Review
Whether an invention has been reduced to practice is a question of law based on
underlying facts. Cooper v. Goldfarb, 154 F.3d 1321, 1327 (Fed. Cir. 1998).
Accordingly, the Board’s ultimate conclusion of reduction to practice is reviewed de
novo, while its underlying factual findings are reviewed for substantial evidence.
Henkel I, 485 F.3d at 1374. “Substantial evidence is more than a mere scintilla. It
means such relevant evidence as a reasonable mind might accept as adequate to
support a conclusion.” Consol. Edison Co. v. NLRB, 305 U.S. 197, 229 (1938).
B. Analysis
Following our remand in Henkel I, the Board found that P&G demonstrated an
actual reduction to practice in February 1997, Board Decision at 10, predating Henkel’s
reduction to practice in May 1997, and thus awarded priority of invention to P&G, id. at
69. In so doing, the Board made a key factual determination—that P&G inventors
appreciated by February 1997 the limitation in the count requiring that the compressed
region of the tablet dissolve at a greater rate than the non-compressed region. Id. at
2008-1447 3
61-62. Whether substantial evidence supports this finding of fact is the only issue on
appeal. Henkel contends that “the objective evidence before the Board fails to record or
establish that any P&G inventor contemporaneously appreciated, or even conceived of,
an embodiment meeting the express comparative dissolution rate limitation of Count 2
prior to Henkel’s accorded actual reduction to practice date.” Henkel’s Opening Br. at
19. P&G counters that its inventors did, in fact, appreciate the differential dissolution
rate limitation, and that the record evidence supports the Board’s decision.
“In order to establish an actual reduction to practice, the inventor must prove that:
(1) he constructed an embodiment or performed a process that met all the limitations of
the interference count; and (2) he determined that the invention would work for its
intended purpose.” Cooper, 154 F.3d at 1327. The inventor must also
“contemporaneously appreciate that the embodiment worked and that it met all the
limitations of the interference count.” Id.; see also Henkel I, 485 F.3d at 1374. As we
held in Henkel I, to demonstrate a reduction to practice of the invention at issue here the
inventors need only appreciate “that the dissolution rate of the compressed region is
greater than the dissolution rate of the other region.” Henkel I, 485 F.3d at 1375.
The Board relied primarily upon three pieces of evidence for its conclusion that
P&G inventors reduced the invention to practice prior to Henkel: a Record of Invention
by Alasdair McGregor dated November 22, 1996 (“the McGregor Record of Invention”),
J.A. 321-29, McGregor’s subsequent declaration, id. at 386-92, and a January 1997
Monthly Report by Sabine Metzger-Groom (“the Metzger-Groom Report”), id. at 371;
see also Board Decision at 53-54 (“[O]ur focus for actual reduction to practice is on
Metzger-Groom’s making and testing of the tablet [described in the McGregor Record of
2008-1447 4
Invention] and [McGregor’s] purported appreciation that the invention worked for its
intended purpose.”). In particular, the Board found that although the McGregor Record
of Invention does not itself demonstrate an appreciation for the contested comparative
dissolution rate limitation, McGregor’s subsequent testimony that he appreciated that
limitation at the time, as corroborated by the Metzger-Groom Report, was sufficient to
demonstrate appreciation for the comparative dissolution rate and thus to demonstrate
an actual reduction to practice. 2 Board Decision at 61-62, 68-69; see also id. at 3.
Because our review is confined to the question of whether the Board’s
determination is supported by substantial evidence, we turn to the evidence the Board
relied upon to determine whether it is adequate to support the Board’s conclusion. The
McGregor Record of Invention describes a “dimple” tablet—i.e., a compressed tablet
with a dimple, into which a molten mixture comprising an inert carrier and a detergent
2
We note that the Board also considered the declaration of David J. Smith
(“the Smith Declaration”), which documents Smith’s reproduction and testing—many
years after the relevant time frame for reduction to practice—of a tablet made according
to the McGregor Record of Invention. Board Decision at 22-23; see J.A. at 346-361.
According to the Smith Declaration, a tablet made according to the McGregor Record of
Invention possesses all the limitations of Count 2, including the relative dissolution rate
limitation. J.A. at 347 ¶ 9. Smith’s later recognition of this property of the dimple tablet
is irrelevant, however, to whether the inventors contemporaneously appreciated the
limitation at the time of the alleged reduction to practice. The Board appeared to
recognize as much, noting specifically that it “g[a]ve Mr. Smith’s testimony no weight as
to the question of whether the inventors’ [sic] conceived of this tablet property or
contemporaneously appreciated this property.” Board Decision at 57. Nevertheless,
the Board gave contradictory indications in the same discussion, noting that
appreciation of the comparative dissolution rate limitation was “confirmed by the
testimony of David Smith,” id., and “credit[ing] Smith’s testimony, for . . . it is consistent
with the contents of the [McGregor Record of Invention],” id. The Board’s inconsistent
and inappropriate treatment of the irrelevant Smith Declaration in this highly fact specific
case is not helpful. That fact notwithstanding, the Board’s error is harmless given the
Board’s explicit disavowal of any reliance upon it. It is clear that what was determinative
at the Board was its interpretation of the Metzger-Groom Report as being corroborative
of McGregor’s testimony.
2008-1447 5
additive is poured and allowed to harden. J.A. 322. The parties do not dispute that the
McGregor Record of Invention describes a detergent tablet including all limitations of
the count except for the limitation relating to comparative dissolution rates. Although
that limitation is absent from the McGregor Record of Invention, McGregor subsequently
testified that he appreciated, no later than February 14, 1997, that the compressed
region of the tablet dissolved more quickly than the non-compressed region. Board
Decision at 14; J.A. 387 ¶ 4. The Metzger-Groom Report documents the preparation
and testing of the tablet discussed in the McGregor Record of Invention. In the course
of discussing the test results, Metzger-Groom states that “the performance of dimple
tablets is slightly worse than that of regular tablets,” noting that the loss of performance
could be a result of “slower release of NB-base from the dimple vs. regular tablets.”
J.A. 371.
The Board read this last statement—i.e., “slower release of NB-base from the
dimple vs. regular tablets”—as an appreciation that the compressed region (i.e., the
“regular” region) of the dimple tablet dissolved at a faster rate than the non-compressed
region (i.e., the “dimple” region). Consequently, the Board concluded that it
corroborated McGregor’s testimony that he appreciated the comparative dissolution
rates. See Board Decision at 61-62 (“We credit McGregor’s testimony regarding
appreciation as it is sufficiently corroborated by, and consistent with, the evidence of
record. For example, Metzger-Groom’s monthly report identifies the tested tablets as
successfully removing carotenoid stains and as having a slower dissolution rate for the
noncompressed region (dimple) as opposed to the compressed region.”).
2008-1447 6
P&G argues that the Board’s interpretation of the Metzger-Groom Report is
correct and that the Board did not err in awarding priority to P&G. Henkel counters,
however, with its own interpretation of this evidence. According to Henkel, the
statement under examination does not reveal an appreciation of differential dissolution
rates of the compressed and non-compressed regions of the same tablet, but instead
“implies a potentially slower release of the untablettable active ingredient from the
dimple inert carrier than the release of the same active ingredient tabletted in a regular
tablet, i.e., a single-region tablet.” Henkel’s Opening Br. at 11. Henkel therefore
contends that the Board erred by awarding priority to P&G.
The interpretation of the critical portion of the Metzger-Groom Report is a very
close call, and can reasonably go either way. But our inquiry in this case is not how we
would interpret this statement in the Metzger-Groom Report were we to do so in the first
instance. Rather, our task is to determine whether the Board’s interpretation is
supported by substantial evidence. We conclude that it is. In light of the focus of the
Metzger-Groom Report on testing the two-region dimple tablet conceived in the
McGregor Record of Invention, as well as the numerous references in the report to
dissolution rates in general, e.g., J.A. 371 (noting goal of concept was to “improve
stability and rate of delivery” of cleaning agents (emphasis added)), we find the Board’s
interpretation—that this statement demonstrates an appreciation that the dissolution
rate of the dimple, or non-compressed region of the tablet, was slower than the
“regular,” or compressed region of the tablet—reasonable. Thus, even if we were to
assume for the sake of this appeal that Henkel’s interpretation of the Metzger-Groom
Report is also reasonable, the substantial evidence standard of review compels
2008-1447 7
affirmance of the Board’s interpretation. See Guise v. Dep’t of Justice, 330 F.3d 1376,
1381 (Fed. Cir. 2003) (finding Merit System Protection Board’s interpretation of
evidence supported by substantial evidence where the interpretation was reasonable);
see also NLRB v. Augusta Bakery Corp., 957 F.2d 1467, 1473 (7th Cir. 1992) (“Where
two inferences are possible, we cannot substitute our own inference for that of the
Board, so long as the Board’s is supported by substantial evidence in the record as a
whole.”); Midland Transp. Co. v. NLRB, 962 F.2d 1323, 1326 (8th Cir. 1992) (“We may
not substitute our interpretation of the evidence for the Board’s reasonable inferences.”).
Because Henkel challenges only the Board’s interpretation of the Metzger-Groom
Report and not the Board’s conclusion of corroboration based on that interpretation, we
affirm the Board’s award of priority of invention to P&G.
III. CONCLUSION
The decision of the Board is AFFIRMED.
COSTS
No costs.
2008-1447 8