Brown v. Barbacid

In May 1990, Mariano Barbacid and Veeraswamy Manne applied for a patent on a test to identify anticancer compounds. This resulted in the issuance of a patent in 1993. In December 1992, an application for a patent on the same invention was filed by Michael Brown, Joseph Goldstein, and Yuval Reiss. However, this rival patent application was given the benefit of an April 1990 filing date, making Brown, Goldstein, and Reiss the senior party. This resulted a proceeding before the United States Patent and Trademark Office interference board (the board). Reiss testified that he conducted two experiments in September 1989 and provided notebooks with relevant details. The first experiment did not satisfy every limitation—i.e., element—of the disputed invention, but the second did. However, the board declined to consider the notebooks, holding that Reiss’s oral testimony failed to provide sufficient authentication. Another party, Dr. Patrick Casey, provided testimony of interactions with Reiss that suggested conception of the invention by Reiss in late 1989. However, Casey’s testimony was too vague to provide corroboration of the September 1989 experiments. The board determined that Barbacid and Manne reduced the invention to practice no later than March 1990. The board awarded priority to Barbacid and Manne. Brown, Goldstein, and Reiss appealed to the United States Court of Appeals for the Federal Circuit.