Inferference Party Must Appreciate Invention, Not Necessarily Precise Language of Count

Henkel Corporation v. The Proctor & Gamble Company, [06-1542](May 11, 2007)[LINN, Gajarsa, Moore] The Federal Circuit vacated and remanded a decision by the Board because of an error in imposing an unwarranted requirement for reduction to practice.
BRIEF: At issue were intefering patent applications on diswasher detergent tablets divided into two regions. The Board awarded priority to Proctor & Gamble on the ground that Hinkel inventors failed to demonstrate that its named inventors "appreciated" that which they had invented. LOF: Priority, conception, and reduction to practice are questions of law whch are based on subsidiary factual findings." To show reduction to practice, an inventor must prove that he contemporaneously appreciated an embodiment tht met all the limitations of the interference count." The interference count required that the tablets have a compressed region with a dissolution rate that is greater than the rate of the other region, and the Federal Circuit held that is was error to require Henkel to show it calculated or measured the specific rates of dissolution. The Federal Circuit said that "[A]s a matter of law, we do not require that a junior party in an interference demonstrate that it recongized the exact languge of the ultimate count -- only the subject matter of the ultimate invention."