Engelhardt v. Judd

Engelhardt v. Judd
369 F.2d 408
Bluebook cite
Engelhardt v. Judd, 369 F.2d 408 (C.C.P.A 1966).
369 F.2d 408
Item Type
Patent interference proceeding. Board awarded priority to senior party, and junior party appealed. Although the case was decided based on “abandonment, suppression, or concealment” under § 102(g), the court began by discussing utility in the context of actual reduction to practice. The junior party had established in his specification the successful use of the compound at issue on laboratory animals, but also referenced appropriate dosages for humans. The board expressed concern as to whether sufficient proof of utility had been established by the laboratory animal tests in view of the reference to humans. The court clarified this issue, holding that “reference to dosing humans in his specification does not preclude an inventor from proving actual reduction to practice of a drug by successful utility testing on standard experimental animals.” Id. at 410.

Additionally, the senior party argued that actual reduction to practice had not been established because the utility demonstrated in the laboratory animal tests (antihistamine and antiserotonin activity) was not the same as the utility asserted in the junior party’s specification (utility as antispasmodics and central stimulants). The court rejected this argument stating that “a compound may conceivably be useful for many different specific purposes, any one of which may suffice to show practical, substantial utility for a compound of an interference count unlimited as to use.” Id. at 411. The court further stated that “{w}e are considering claims to compounds here, so we are not concerned with the fact that, in establishing an actual reduction to practice, {the junior party} successfully demonstrated utility of his compound in animals for somewhat different pharmaceutical purposes than those asserted in his specification.” Id. at 711.

Excerpts and Summaries

Tuesday 28 of October, 2008 14:16:54 GMT
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Friday 31 of October, 2008 14:19:42 GMT
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