Interference No. 104,101
Page 31
Lilly has attempted to demonstrate that it was first to conceive and first to reduce to
practice an invention falling within the scope of the Count. Cameron does not appear to contest
that Lilly was first to conceive of an embodiment falling within the scope of the Count. Based on
the evidence presented, we conclude that Lilly was the first to conceive of a compound falling
within the scope of Count 2, the sole count in interference. Yet, we also conclude that Lilly has
failed to sufficiently demonstrate an actual reduction to practice of a compound falling within the
scope of Count 2.
Lilly has apparently attempted to identify and confirm a practical utility for only one
specific compound, LY 311583. As to that compound, Lilly has failed to sufficiently
demonstrate that Mr. Cullinan actually prepared a compound having the structure depicted in
Lilly submission LY 311583. Specifically, Lilly has relied extensively upon information
received from a named inventor, Mr. George J. Cullinan.
Mr. Cullinan has generally testified that he requested certain types of physical chemistry
analyses of the compounds he produced. Without identifying or explaining the raw data
produced from these chemical analyses, Mr. Cullinan has merely stated that the analyses “helped
me to confirm whether I had obtained the desired product.” (See, LX 1152, ¶ 23). We have not
been directed to evidence that indicates that the chemical analyses were sufficient to confirm that
LY 311583 had the postulated structure.
The question of whether or not Mr. Cullinan actually produced the desired compound is
an inventive fact. An inventive fact must not rest alone on testimonial evidence from the
inventor himself. Brown v. Barbacid, 276 F.3d at 1335, 61 USPQ2d at 1240; Cooper v.
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