Anderson did not inure to the benefit of the inventors under
Genentech.
Furthermore, Huang has not proven by a preponderance of
the evidence that the test results obtained by Monsanto
employee Koboldt, Veenhuizen, or Anderson established a
practical utility for SC-58394, SC-60246, SC-60247, SC-60248,
SC-60667, or
SC-60668. Accordingly, even if the testing of SC-58394,
SC-60246, SC-60247, SC-60248, SC-60667, or SC-60668 by the
Monsanto employees inured to the benefit of the inventors,
Huang has not shown that the inventors recognized a practical
utility for any of the compounds sufficient to show an actual
reduction to practice prior to 29 August 1994.
Superficially, our denial of Huang preliminary motion 1
and our holding that Koboldt's in vitro testing of compounds
of the count did not establish a practical utility for the
compounds prior to Prasit's constructive reduction to practice
of 29 August 1994 may seem inconsistent. On the one hand, we
deny Huang preliminary motion 1 attacking utility and
enablement of the Prasit '931 claims while acknowledging that
the '931 disclosure contains only in vitro testing of the
claimed COX-2 inhibitors. On the other hand, we hold that
Koboldt's in vitro testing of compounds of the count is
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