attention to the two issues identified by the parties in their
briefs. 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 date 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. The
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 the
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 its
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 of the
hearing below, allowing it to prove Backman’s actual date of
reduction to practice would merely be admitting new evidence on the

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


a patent for the invention, a declaration that Abbott’s assignors
are the reaction’s original and first inventors, and a declaration
that they alone are entitled to a patent for the invention.
SC! Tr

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, 468 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, I 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 introduction of
new material is at 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
of review in a §146 action. In its memorandum, Abbott maintains
that an issue is “raised” if mentioned in a preliminary statement,
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 process. Estee
Lauder, Inc. 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 theory 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 to conceive the invention and was diligent in reducing it to
practice...because Estee Lauder failed to raise this issue before
the board.” Id., 592.

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

(1) whether R. Bruce Wallace invented the subject matter
of the interference before December 11, 1987; and
(2) whether inventorship was proper in the Wallace

application.


nog
Lm

Minute Order Form (06/97)

9 United States District Court, Northern District of Illinois
Name Ariane Jat Elaine E, Bucklo Sina ede Ute
CASE NUMBER 00 C 7970 aa C 9663 DATE 9/26/2002
CASE Abbott Laboratories vs. City of Hope
TITLE

[In the following box (a) indicate the party filing the motion, ¢.g., plaintiff, defendant, 3rd party plaintiff, and (b) state briefly the nature
of the motion being presented}

MOTION:

DOCKET ENTRY:

qa) o Filed motion of [ use listing in “Motion” box above.]

(2) im] Brief in support of motion due___.

(3) Oo Answer brief to motion due . Reply to answer briefdue____.

(4) Oo Ruling/Hearingon___setfor__—_—at.

(5) Oo Status hearing[held/continued to] [set for/re-set for] on setfor ss at_
(6) o Pretrial conference[held/continued to] [set for/re-set for]on__setfor__—sat_—
(7) ia Trial[set for/re-set for] on__at

(8) i [Bench/Jury trial] [Hearing] held/continuedto__at

(9) Oo This case is dismissed [with/without] prejudice and without costs[by/agreement/pursuant to]

OOFRCP4(m) OLocal Rule 41.1 CFRCP41(a\(1) (1) FRCP41(a)(2).

do (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 Wallace
application.

(al) ff [For further detail see order attached to the original minute order.]

No notices required, advised in open court.

No notices required.

W | Notices mailed by judge’s staff.

Notified counsel by telephone.

Docketing to mail notices,

Mail AO 450 form. tA
S ly 09 Lo1LSIa sin

Copy to judge/magistrate judge.

courtroom PERS id
MPI deputy’s
initials ——
SS Datéaime received in
central Clerk's Office



Dated:

September 26, 2002

ENTER ORDER:
Lonel Eurhb-

Elaine E. Bucklo
United States District Judge



IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION DOCKETED

SEP 27

ABBOTT LABORATORIES, ) 27 2002
, )
Plaintifé, )
)
Vv. )

) No. 00 ¢ 7970

CITY OF HOPE, )
. : )
Defendant. )
)

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. I hold that it does not.

BACKGROUND

On October 24, 1994, the U.S. Patent and Trademark Office
(“USPTO”) declared an interference between the patent applications
of Keith C. 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

each purported inventor conceived and reduced to practice the



invention, and whether the disputed applications themselves were
proper in form and substance. A party 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 constructive reduction to practice.

In their preliminary statements to the Board, both Abbott 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. Those 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 fatally
improper. That is, Backman chose not to attempt to prove the actual
dates 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