Burroughs Wellcome Co. v. Barr Labs., Inc. - 40 F.3d 1223 (Fed. Cir. 1994)

Rule:

Conception is the touchstone of inventorship, the completion of the mental part of invention. 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. Conception is complete only when the idea is so clearly defined in the inventor's mind that only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation. Because it is a mental act, courts require corroborating evidence of a contemporaneous disclosure that would enable one skilled in the art to make the invention.

Facts:

Plaintiff Burroughs Wellcome Co. was the owner of patents that covered various preparations of a drug in the treatment of persons infected with the human immunodeficiency virus. Plaintiff filed infringement suits against defendants after defendants sought approval to manufacture and market a generic version of the drug. Defendants appealed an order granting plaintiff's motion for judgment as a matter of law that the patents were not invalid and were infringed.

Issue:

1. Was the inventor’s belief on whether or not the patent would work material to the issue of the invention’s conception, and consequently, to the issue of patent infringement?
2. Did the trial court err in granting plaintiff’s motion for summary judgment with respect to plaintiff’s infringement claim?

Answer:

1) No. 2) No, except with respect to one patent.

Conclusion:

The court rejected defendants' argument that they should have been allowed to present evidence that plaintiff's inventors had no reasonable belief that the inventions would actually work. On appeal, the court noted that an inventor's belief that his invention would work was irrelevant to conception. The decision was vacated in part because the lower court's ruling on one patent was inappropriate.