attention Lo the two issues identified by the parties in their

breiefs. City of Hope is correct, By failing to properly raise the
issue below, Abbott has indeed waived its opportunity to litigate
the issue of Backman’s actual dale of reduction to practice.

A significant body of case law leads to the conclusion that
including a factual assertion in a preliminary statement before the
Board is not “raising an issue” within the meaning of §146. ‘lhe
Federal Circuit has held that including an issue in a preliminary
statement to the Board is not sufficient to merit §146 review of
that issue unless a party takes the opportunity to require a
determination of the issue, either by filing an appropriate motion
or by “insist[ing] that the issue be resolved” during Lhe
administrative proceeding. General Instrument Corp., Inc. v.
Scientific-Atlanta, Inc., 995 F.2d 209, 214 (Fed. Cir. 1993). See
also Conservolite, Inc., v. Widmayer, 21 F.3d 1098, 1102 (Fed. Cir.
1994), cert. denied, 513 U.S, 1016 (1994). Abbott filed no motions
demanding a judgment as to the date of Backman’s actual reduction
to practice of the invention, and offers no support in Ils
memorandum for the notion that it insisted that the Board resolve
the question in some other fashion,

Abbott also argues that since priority was the subject the

hearing below, allowing it to prove Backman’s actual date of

reduction to practice would merely be admitting new evidence on the

niral issue, which was unquestionably raised below. But the fact



a patent for the invention, a declaration that Abbolt’s assignors
are the reaction’s original and first inventors, and a declaration
that they alone are entitled to a patent for the invention.
DISCUSSION

An action under 35 U.S.C. §146 has “the hybrid nature of an
appeal and a trial de novo.” Case v, CPC Int’l, Inc., 730 F.2d 745,
752 (Fed. Cir. 1984), cert. denied, 4168 U.S. 872 (1984). The
standard for the introduction of evidence at this level is hybrid
as well, Like an appeals court, I must review the record of the
administrative proceeding below, granting evidence therefrom “the
same effect as if originally taken and produced in the suit.” 35
U.S.C. $146. Yet, like a trial court, | may also consider
additional testimony and new evidence regarding those issues which

were “raised” by the parties or by the Board itself. Id., 752. The

precise meaning of this important limitation on the introduc
new material is al the heart of the dispute at hand.

In order to facilitate efficient discovery, on August 6, 2002,
I ordered that both parties submit memoranda discussing the scope
ef review in & §146 action. In its memorandum, Abbott maintains
that an issue is “raised” if mentioned in a preliminary sLatement,
whether the issue was briefed and argued or not, and thus that the
issue of Backman’s actual date of reduction to practice is a proper
subject for consideration in the present action. COH contends that

Abbott has waived that issue, and that I should confine my



that priority, in general, was raised before the board does not
mean that Abbott may now choose to prove priority via a novel

theory. The Federal Circuit has held that such switching of

theories is impermissible at this point in the proce

Lauder, Ine. v. L'Oreal, S.A., 129 F.3d 588 (Fed. Cir. 1997),
concerned a §146 action following an interference resolving a
patent dispute between rival cosmetics manufacturers. At the
administrative level, Estee Lauder relied solely on the theory that
it was first to reduce the invention to practice. L'Oreal won
priority, and Estee Lauder filed a $146 appeal. The district court
held that Estee Lauder should be awarded priority on a Lheory not
considered below, that. of prior conception and diligent reduction
to practice. The Federal Circuit reversed, in part because the
district court erred in considering whether “Estee Lauder was the
first te conceive the invention and was diligent in reducing it to

practice...because Estee Lauder failed to raise this issue bef

the board.” Td., 592.

The parties must abide by Lhe issues they agreed upon in their
final briefs to Lhe Board. The scope of this action shall
therefore be limited to:

(1) whether R. Bruce Wallace invented the subject m

of the interference before December 11, 1987; and

(2) whether inventorship was proper in the Wallace

application.

wa



Minute Order Form (0097)

United States District Court, Northern District of Tlinois

‘
Name of Assigned Judj ‘laine E ; Sitting Judge if Oth
or Mngtstrate dee Plaine D. Bucklo thaw Assigned Judge
CASE NUMBER @oc 797098 01 C 9663 DATE 9/26/2002
CASE Abbott Laboratories vs. City of Hope
TITLE

[In the following box (a) indicate the party tiling the motion, ¢.g,, plaintiff, defendunt, 3rd purly pluintiff, and (b) state briefly the nature
of the motion being presented.)

MOTION:
DOCKET ENTRY:
q) a Viled mation of [ use listing in “Motion” box above.}
(2) o Brief in support of motion due
(3) o Answer brief'to motion duc. Reply lo answer briefdue___.
(4) oO Ruling/Hearing on set for____at
(3) o Status hearing[held/continued to] [set for/re-set for] on setfor_ at.
(6) Oo Pretrial conference[held/continued to] [set for/re-set for}on set for at__
(7) mM Trial[set for/reesel lor]on at
(8) Oo [Bench/Jury trial] [Hearing] held/continucd to at
(9) nM This casc is dismissed [with/without] prejudice and without costs|by/agreement/pursuant to]
COFRCP4(m) CLocal Rule 41.1 COERCP41(a)(1) C1 FRCP4I(a)(2).
cio) 6d [Other docket entry] Enter Memorandum Opinion and Order regarding the question whether

including a factual assertion in a preliminary statement before the Board of Patent Appeals and
Interferences constitutes “raising an issue” within the meaning of 35 U.S.C, Section 146, The court holds
that it does not. This action is therefore limited to whether R. Bruce Wallace invented the subject matter
of the interference before December 11, 1987 and whether inventorship was proper in the Wallacc
application.

(11) [For further detail sce order attached to the original minute order. |

No notices required, advised in open court

Docunieny

Nutnue

53

No notices required. number of notices

OY | Notices eauited by judge's staff SEP 27 2002

Notified counsel by telephone, date docketed,

Docketing w mail notices

Mail AO 450 form.

oo LyAdS LoM sig sq
Copy to judge/magistrate judge. ca
courtroom, a
MP) depuly’s . sap
initials
Dute/time received in |
central Clerk's Office ‘mailing deputy initials



Dated:

September 26

2002

ENTER ORDER:
Nas)
CLEME, Zz fa adie

Elaine E. Bucklo
United States District Judge



IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION DOCKETED

SEP 27 2002
ABBOTT LABORATORIES,

Plaintiff,
v.
CITY OF HOPE,

Defendant.

Zz
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co
S
a
G
cS

MEMORANDUM OPINION AND ORDER

The question before me is whether including a Factual
assertion in a preliminary statement before the Board of Patent
Appeals and Interferences constitutes “raising an issue” within the
meaning of 35 U.S.C. §146, T hold that it does nok.

BACKGROUND

On October 24, 1994, the U.S. Patent and Trademark Office
(“USPTO”) declared an interference between the patent applications
of Keith Cc. Backman (“Backman”), assigned to Abbott Laboratories
(“Abbott”), and that of R. Bruce Wallace (“Wallace”), assigned to
City of Hope (“COH”), concerning an invention called “ligase chain
reaction.” An interference is an administrative hearing before a
panel of the Board of Patent Appeals and Interferences (“the
Board”) resolving questions of priority among conflicting patent
applications. Critical questions in such a hearing include the date

ch purported inventor conceived and reduced to practice the



invention, and whether the disputed applications themselves were
proper in form and substance. A partly may establish priority either
by proving the actual date it reduced the invention to practice or
by proving the date it filed an adequate patent application, which
date may serve as a conskructive reduction to practice.

In their preliminary statements to the Board, both Abhott and
COH stated the dates of conception and actual reduction to practice
of the invention according to their version of events. However, in
their final briefs submitted to the Board, Abbott and COH agreed
that the case presented only three issues, two of which are still
active at this time. hose two issues are: whether Wallace
conceived and reduced to practice the invention by December 11,

1987, the date Backman, applied for a patent, and whether the

statement of inventorship in the Wallace application was fat y
improper. That is, Backman chose not to attempt to prove the actual

tes of conception or reduction to practice of its invention; it

chose to rely on its constructive date of reduction to practice,
the date the application was filed. Following a final hearing on
August 23, 2000, the Board issued a decision granting judgment to
Wallace.

Abbott filed the present action against COH seeking review

under 35 U.S.C. §146 of the Board’s decision awarding the ligase

chain reaction patent to Wallace rather than to Backman. Abbott.

prays for a reversal of the Board’s finding that COH is entitled to