Interference No. 103,203
only in possession of a complete handwritten amino acid sequence of the mature human
tissue factor from which it is alleged that a nucleotide sequence “could be derived,” and on
the latter date he is in possession of a complete computer listing of the amino acid
sequence from amino acid residue 1 to residue 263, from which it is also alleged that a
nucleotide sequence “could be derived.”
In view of the aforementioned inconsistencies, we find that careful consideration of
the evidence provided to support the “Facts,” is crucial. We consider first the evidence
provided to support Facts 41 through 43, which are said to establish that Nemerson et al.
were in possession of a species within the scope of the count prior to the “critical date,”
i.e., prior to Lawn et al.’s effective filing date of February 12, 1987.
As we understand it, Nemerson et al. are relying on the work and testimony of Dr.
Bach (NR 101-119, NR 156) and Dr. Spicer (NR 3822-25) to demonstrate an actual
reduction to practice of a species within the scope of Count 2. Nemerson Brief, p. 10,
lines 18-19; pp. 20-22, Facts 41-45 and 49; p. 40, lines 1-4. Dr. Bach is not an inventor;
however, reduction to practice of an invention does not have to be done by the inventor, as
long as it [the reduction to practice] was performed on his behalf. In re
DeBaun, 687 F.2d 459, 463, 214 USPQ 933, 936 (CCPA 1982); Litchfield v. Eigen,
535 F.2d 72, 76, 190 USPQ 113, 116 (CCPA 1976). Thus, as a non-inventor, his
testimony need not be corroborated, but it must be credible. In view of the granting of
Nemerson et al.’s motion pursuant to 37 C.F.R. § 1.634, see above, Dr. Spicer is now a
co-inventor. Accordingly, her statements require corroboration. Hahn v. Wong, 892 F.2d
at 1032, 13 USPQ2d at 1317.
Turning first to the testimony of Dr. Bach, we find that he testifies with respect to
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