is of relatively high affinity. That is with a binding affinity of at least
10 to the 8th.
ER 3505, lines 10-15.
We declined above (page 38) to credit Langone’s testimony relating to his estimate of the
affinity constants from the example 1 data. Other than the count of this interference, we have not
been shown any objective basis for Langone’s opinion that “relatively high affinity” means “at least
8
10 liters/mole.”
More importantly, however, Langone’s understanding of the affinity constant when he
reviewed the data and testified in 1990, does not show that there was a contemporaneous recognition
8
and appreciation of an affinity constant of “at least about 10 liters/mole” by the inventorsprior to
August 4, 1980. Conception may not be shown nunc pro tunc. Estee Lauder, 129 F.3d at 593-94,
44 USPQ2d at 1614. Langone’s 1990 testimony of his understanding of “relatively high affinity” fails
to be probative of what was in the inventors’ mind at the time of the alleged conception in the Fall
of 1978. The question of conception is properly directed to whether there was "formation [] in the
mind of the inventor of a definite and permanent idea of the complete and operative invention . .
. [and whether] every limitation of the count [was] known to the inventor at the time of the alleged
conception." Bosies, 27 F.3d at 543, 30 USPQ2d at 1865, quoting Coleman, 754 F.2d at 359, 224
USPQ at 862. Langone’s understanding of the “relatively high affinity” is not probative of what was
in the mind of the inventors. A junior party cannot satisfy the burden of proof and rebut the
presumption in favor of the senior party on the basis of an incomplete written conception plus
testimony of a non-inventor as to what the non-inventor thought the phrase “high affinity” meant.
See, Bosies, 27 F.3d at 543, 30 USPQ2d at 1865. We have not been directed to any corroborating
evidence which demonstrates the inventors’ understanding of the meaning of “high affinity.”
Engvall argues strenuously that the conception of the use of “high affinity” antibodies is
8 8
sufficient to establish conception and that 10 liters/mole is not critical. However, “at least about 10
liters/mole” is an express limitation of the count. And all express limitations of the count are material
and cannot be ignored. Schur, 372 F.2d at 551, 152 USPQ at 609. A party attempting to prove
conception must prove conception of every express limitation of the count. Kridl, 105 F.3d at 1449,
44
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