Conception Not Established By Preliminary Statement About Potential Use And Recommendation For Continued Work

In Dawson v. Dawson, Nos. 12-1214, -1215, -1216, -1217 (Fed. Cir. Mar. 25, 2013), the Federal Circuit affirmed the Board's decision in an interference proceeding that the University of California, San Francisco ("UCSF"), failed to prove sole conception by Chandler Dawson prior to his collaboration with Lyle Bowman. The Court dismissed as moot Drs. Dawson and Bowman's claims that UCSF's conflicting patent claims were unpatentable under 35 U.S.C. §§ 102(b) and 135(b).

In 1997, Dr. Dawson, who was at the time employed by UCSF, gave a presentation to the World Health Organization ("WHO") related to the topical use of azithromycin to control trachoma, a bacterial infection of the eye. The WHO released a report of the meeting containing a discussion of Dr. Dawson's presentation and listing benefits and objections to topical trachoma treatment. A second WHO document, which UCSF contends was Dr. Dawson's outline for the presentation, contains many of the same statements as the report, as well as a statement about the difficulties with ointments for trachoma treatment.

After the meeting, Dr. Dawson asked Kenneth Chern to contact Dr. Bowman to assist in creating a suitable ophthalmic medication with azithromycin for topical application to the eye. In 1999, Drs. Dawson and Bowman filed a patent application that led to the issuance of U.S. Patent Nos. 6,239,113 ("the '113 patent") and 6,569,443 ("the '443 patent"). Both patents are entitled "Topical Treatment or Prevention of Ocular Infections," and the specifications point out many of the difficulties with topical eye treatments that were noted during the development process. UCSF subsequently filed a patent application naming Dr. Dawson as the sole inventor and generally copying the specification and claims of the '113 and '443 patents to provoke an interference. After lengthy interference proceedings, the Board found that UCSF had failed to prove sole conception by Dr. Dawson.

"The definition of conception in patent law has remained essentially unchanged for more than a century. It is the 'formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice.'" Slip op. at 10 (quoting Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1376 (Fed. Cir. 1986)).

On appeal, the Federal Circuit found no basis for overturning the Board's conclusion that UCSF failed to establish sole conception by Dr. Dawson...