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Oka v. Youssefyeh - 849 F.2d 581 (Fed. Cir. 1988)

Rule:

Conception requires (1) the idea of the structure of the chemical compound, and (2) possession of an operative method of making it. Conception may conveniently be considered as consisting of two parts. The first part is "the directing conception" and may be defined as the idea or conception that a certain desired result may be obtained by following a particular general plan. The directing conception is often referred to as the inventive concept, thought or idea. The second part of conception is the selection of the means for effectively carrying out the directing conception. When a method of making a compound with conventional techniques is a matter of routine knowledge among those skilled in the art, a compound has been deemed to have been conceived when it was described, and the question of whether the conceiver was in possession of a method of making it is simply not raised. 

Facts:

Youssefyeh, (“junior party”), invented or conceived of a 5-indanyl compound, which presumably had market value on February 27, 1980. The junior party directed a chemist to prepare the compound in October 1980. The compound was not, however, successfully prepared until December 1980. Meanwhile, on October 31, 1980, Oka (the “senior party”) filed a patent for the same compound. In a patent interference count, The Patent and Trademark Office Board of Patent Appeals and Interferences awarded priority invention to the junior party, finding that its date of conception was October 10, 1980. The senior party appealed.

 

Issue:

Did the Patent and Trademark Office Board of Patent Appeals and Interferences err in awarding priority invention to the junior party?

Answer:

Yes.

Conclusion:

On appeal, the United States Court of Appeals for the Federal Circuit reversed the award because the finding that the conception date was October 10, 1980 was clearly erroneous. The Court first explained that conception requires (1) the idea of the structure of the chemical compound, and (2) possession of an operative method of making it. The Court noted that the junior party's conception and the senior party's filing date were the same, i.e., October 31, 1980. Oka, as the senior party, was presumptively entitled to an award of priority, and Youssefyeh, as the junior party in an interference between pending applications, was required to overcome that presumption with a preponderance of the evidence. In the event of a tie, therefore, priority must be awarded to the senior party. The Court found that because there was a senior party involved, the junior party was required to have established that its idea had been reduced to practice before the senior party's' filing date, in accordance with 35 U.S.C.S. § 102(g). The Court held that because the junior party (Youssefyeh) did not prove that its idea had been reduced to practice until December 1980, after the senior party's filing date, it was not entitled to an award of priority invention. 

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