constant value or relate it to clinically used polyclonal antibodies. Holbeck, ER 2124, lines 4-6;
Hayman, ER 537, lines 2-9.
We conclude that Engvall has failed to prove an actual reduction to practice of an embodiment
falling within the subject matter of the count, even if the improper arguments in Engvall’s reply brief
are considered.
IV. David’s alleged inequitable conduct
Engvall contends that David’s conduct during the prosecution which resulted in the issuance
of the David patent and during this interference was inequitable and therefore precludes David from
an award of priority. Engvall Brief, pp. 119-146. Engvall asserts two separate bases for inequitable
conduct: (1) that David failed to disclose the “best mode contemplated by the inventor of carrying
out his invention” and (2) David withheld material information from the PTO, namely, information
that David did not assert criticality of the affinity constant limitation in the foreign counterparts of
David’s U.S. application.
We disagree with both of Engvall’s assertions and hold that the record does not establish that
David committed inequitable conduct during the proceedings before the PTO.65
A. Engvall’s best mode theory
1. David’s claimed subject matter
The David patent includes 29 claims all directed to a process for determining the presence or
the concentration of an antigen. All of the claims require the use of two different monoclonal
antibodies having an affinity constant of “at least about 10 liters/mole” for each. Representative8
claims 1, 10 and 19, the independent claims, are reproduced below:
1. A process for the determination of the presence or
concentration of an antigenic substance in a fluid comprising the steps:
(a) contacting a sample of the fluid with a measured amount
of a soluble first monoclonal antibody to the antigenic substance in
65
Entry of a judgment against an opponent based on inequitable does not entitle the party to a judgment
on the issue of priority. See, e.g., Perkins v. Kwon, 886 F.2d 325, 12 USPQ2d 1308 (Fed. Cir. 1989) (one party not
entitled to a patent because it lost on priority; the party winning on priority not entitled to a patent based on a prior
public use/sale). Hence, the most Engvall could have achieved, had Engvall prevailed on the inequitable conduct issue,
would be a judgment that David is not entitled to any claims. Engvall would not have prevailed on priority, because the
claims are not patentable under 35 U.S.C. § 102(g)--whether the priority issue is raised by David inter partes in the
interference, or by some other third party (including the PTO) in another proceeding.
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