73/3 and 73/8 were allegedly stored from the time Dr. Uotila left La Jolla Cancer Research Institute
until 1988. In June of 1988, these samples were sent to Asta Bergland to determine the affinity
9 8
constants. Engvall Brief, p. 64. The affinity constants were reported to be 2.3x10 , 7.2x10 and
6.5x10 liters per mole, respectively. Engvall Brief p. 66-67. These values are within the scope of8
the count.
We have not been directed to any part of the record which shows that the affinity constants
were actually determined contemporaneously with the one-step two-site sandwich assay. As we
indicated above, an actual reduction practice requires that the embodiment include every limitation
stated in the count. Schendel, 83 F.3d at 1402, 38 USPQ2d 1743 at 1746; Newkirk, 825 F.2d at
1582-83, 3 USPQ2d at 1794; Hummer, 500 F.2d at 1387, 183 USPQ at 48; Szekely, 455 F.2d at
1396, 173 USPQ at 119). The affinity constants of the antibodies used in the alleged reductions to
practice were determined nearly ten years after the alleged successful assays.
David asserts that Bergland’s determination of the affinity constants long after the alleged
date of reduction to practice are “improper attempts to prove reduction to practice nunc pro tunc.”
(Emphasis original.) David Brief, p. 33. 64
We agree with David that Engvall’s reliance on the Bergland test results is an attempt to
prove the affinity constants nunc pro tunc. As noted by the Federal Circuit in Estee Lauder:
It is well-settled that conception and reduction to practice cannot be
established nunc pro tunc. There must be contemporaneous
recognition and appreciation of the invention represented by the
counts. [Emphasis original.]
129 F.3d at 593-94, 44 USPQ2d at 1614, quoting Breen, 472 F.2d at 1401, 176 USPQ at 521
(emphasis added). Bergland’s tests performed in 1988 do not demonstrate that there was
64
David also moves to suppress the evidence of Bergland’s alleged testing of the antibodies. David
asserts that the evidence is inadmissible because it is nunc pro tunc. David et al. Motion to Suppress Evidence, pp. 3-4
(Paper 331). This motion is denied. Section 1.656(h) permits a party seeking a ruling on the admissibility of evidence
to file a motion to suppress the evidence. Whether evidence constitutes an impermissible “nunc pro tunc” proof is not a
matter of admissibility, but of weight. We have evaluated Engvall’s nunc pro tunc evidence and have given it no weight.
David also asserts (David et a. Motion to Suppress Evidence, pp. 5-6) that Bergland’s testimony on the testing
of the antibodies should be suppressed because Engvall has not proved proof of a chain of custody for the tested
antibodies and it has not been established that the antibodies Bergland tested are the same antibodies used by Dr. Uotila.
The actual antibodies were not offered into evidence so it is unnecessary to prove a chain of custody. Whether the
antibodies tested by Bergland were the same as used in the alleged reductions to practice goes to the weight of the
evidence not to its admissibility.
51
Page: Previous 47 48 49 50 51 52 53 54 55 56 57 58 59 60 61 Next
Last modified: November 3, 2007