Interference 103,781
The precise language of the reduction to practice
test states “[i]t 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.”
Breen v. Henshaw, 472 F.2d 1398, 1401, 176 USPQ 519,
521 (CCPA 1973)(emphasis added); see also Estee Lauder,
129 F.3d at 593, 44 USPQ2d at 1614 (summarizing past
cases by stating “[t]hese cases trumpet, therefore, the
principle that a reduction to practice does not occur
until the inventor has determined that the invention
will work for its intended purpose”).
The purpose of the invention was to produce a
pesticidal protein toxin in plants through the higher
expression of the Bt gene. The record and the district
court’s opinion clearly show that Monsanto appreciated
that the invention worked for this purpose. Monsanto
tested the plants resulting from their modified genes
specifically looking for the presence of increased Bt
protein. See Mycogen, 61 F.Supp. 2d at 222. Moreover,
scientists, upon learning of the test results indicating
that their gene caused increased Bt expression,
immediately appreciated the significance of the results.
The analyst in charge of the testing testified that the
results “proved that we [Monsanto] had succeeded , that
the synthetic gene worked and worked exceptionally well
in plants. Id. at 240 (alteration in original).
Suffice it to say that the Federal Circuit found “a legally
sufficient evidentiary basis” for the Delaware District Court’s
conclusion that Monsanto (there, as here, Fischhoff and Perlak)
reduced the invention claimed in Mycogen’s U.S. Patent 5,567,600
to practice before September 9, 1988, specifically, “in early-
to mid-August 1988." Mycogen Plant Sci., Inc. v. Monsanto Co.,
243 F.3d at 1311, 58 USPQ2d at 1045.
The Federal Circuit explained the relevance of its
statements on review of the Delaware District Court’s findings of
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