Estee Lauder Inc. v. L'Oreal, S.A.
129 F.3d 588 (1997)
Facts
This case involves the interference of a patent held by L’Oreal (07/180,556) and one held by Estee Lauder (07/135,666) both are a composition using CuDIPs for protecting skin damage from ultra violet light. The ‘666 application was filed on December 21, 1987, while the ‘556 patent was filed on April 12, 1988. However, L’Oreal had applied for the patent in Luxembourg on April 13, 1987 and was deemed the senior party. Estee Lauder had the burden of proving priority.
Estee Lauder became interested in using CuDIPs for protecting skin in the summer of 1986. They sent their director of biological research to a conference on the use of copper complexes in August of 1986. In September they bought a sample of CuDIPs. Two months later Estee Lauder received a sample of a substance they believed to be CuDIPs and began tests. The test results showed a reduction in redness of skin when exposed to UV light. Estee Lauder mixed the material into one of their sunscreen products and sent it to be tested for SFP at an independent research laboratory. In January 1987, Estee Lauder received the results and determined that by adding the material to the sunscreen the SPF was increased. Estee Lauder then ordered more samples of CuDIPs and prepared more samples to be tested at varying SPF levels. On March 9, 1987, these samples were sent to the same independent research laboratory. Partial results were received by Estee Lauder verbally and the final written results were received after April 13, 1987.
There was a question as to whether the partial results received prior to the critical date of April 13, 1987 were in fact the results of the second CuDIPs tests. Neither the research laboratory nor Estee Lauder could show exactly when it occurred.
Procedural History
The United States PTO declared interference between the Estee Lauder and L'Oreal applications on December 6, 1989. Before the Board of Patent Appeals, Estee Lauder relied on the initial tests to establish its reduction to practice. It did not rely on the second set of tests sent to the independent research laboritory. Estee Lauder did not attempt to establish that it was first to conceive the invention and then reduce it to practice. The board found that Estee Lauder had failed to prove that the initial sample of CuDIPs it obtained was actually CuDIPs. The Board held that Estee Lauder had not reduced its invention to practice prior to April 13, 1987.
Estee Lauder filed an action in the United States District Court for the District of Columbia, pursuant to 35 U.S.C. § 146. At trial Estee Lauder relied on both sets of tests to establish its reduction to practice. The Court agreed with the PTO that Estee Lauder failed to show that the initial tests contained CuDIPs. But, it found that the second set of tests did contain CuDIPs. The Court held that these tests established a successful reduction to practice despite the fact that neither inventor, nor Estee Lauder had received and analyzed the second test results and concluded they were successful until after April 13, 1987. The Court reversed the board and awarded priority to Estee Lauder, L'Oreal appeals.
Issue
The main issue is whether Estee Lauder established that it successfully reduced its invention to practice before the critical date of April 13, 1987; and where testing is required to establish utility, must there be some recognition of successful testing prior to the critical date for an invention to be reduced to practice?
Rule
The inventor must know that the invention will work for its intended purpose before it can be reduced to practice.
Holding
Estee Lauder did not reduce invention to practice before critical date. Although testing may have been complete, the test results were not received, analyzed, nor proven successful prior to the critical date. The judgment of the United States District Court for the District of Columbia is reversed, and priority is awarded to L'Oreal.
Analysis
The United States Court of Appeals said to prove actual reduction to practice, an inventor must establish that he actually prepared the composition and knew it would work. Hahn v. Wong, 892 F.2d 1028 (Fed. Cir. 1989) states that an inventor must show that he “knew that it would work†to be able to reduce the invention to practice. Therefore, a reduction to practice cannot occur without the knowledge that the invention will work for its intended purpose. In this case, Estee Lauder did not receive any indication that their second set of tests was successful until after the critical date. The lower court had already determined that the presence of CuDIPs in the first tests had not been established by the evidence. Therefore, there was no indication by a preponderance of evidence that Estee Lauder knew that the invention would work for its intended purpose and without such knowledge the invention could not have been reduced to practice prior to the critical date.
129 F.3d 588 (1997)
Facts
This case involves the interference of a patent held by L’Oreal (07/180,556) and one held by Estee Lauder (07/135,666) both are a composition using CuDIPs for protecting skin damage from ultra violet light. The ‘666 application was filed on December 21, 1987, while the ‘556 patent was filed on April 12, 1988. However, L’Oreal had applied for the patent in Luxembourg on April 13, 1987 and was deemed the senior party. Estee Lauder had the burden of proving priority.
Estee Lauder became interested in using CuDIPs for protecting skin in the summer of 1986. They sent their director of biological research to a conference on the use of copper complexes in August of 1986. In September they bought a sample of CuDIPs. Two months later Estee Lauder received a sample of a substance they believed to be CuDIPs and began tests. The test results showed a reduction in redness of skin when exposed to UV light. Estee Lauder mixed the material into one of their sunscreen products and sent it to be tested for SFP at an independent research laboratory. In January 1987, Estee Lauder received the results and determined that by adding the material to the sunscreen the SPF was increased. Estee Lauder then ordered more samples of CuDIPs and prepared more samples to be tested at varying SPF levels. On March 9, 1987, these samples were sent to the same independent research laboratory. Partial results were received by Estee Lauder verbally and the final written results were received after April 13, 1987.
There was a question as to whether the partial results received prior to the critical date of April 13, 1987 were in fact the results of the second CuDIPs tests. Neither the research laboratory nor Estee Lauder could show exactly when it occurred.
Procedural History
The United States PTO declared interference between the Estee Lauder and L'Oreal applications on December 6, 1989. Before the Board of Patent Appeals, Estee Lauder relied on the initial tests to establish its reduction to practice. It did not rely on the second set of tests sent to the independent research laboritory. Estee Lauder did not attempt to establish that it was first to conceive the invention and then reduce it to practice. The board found that Estee Lauder had failed to prove that the initial sample of CuDIPs it obtained was actually CuDIPs. The Board held that Estee Lauder had not reduced its invention to practice prior to April 13, 1987.
Estee Lauder filed an action in the United States District Court for the District of Columbia, pursuant to 35 U.S.C. § 146. At trial Estee Lauder relied on both sets of tests to establish its reduction to practice. The Court agreed with the PTO that Estee Lauder failed to show that the initial tests contained CuDIPs. But, it found that the second set of tests did contain CuDIPs. The Court held that these tests established a successful reduction to practice despite the fact that neither inventor, nor Estee Lauder had received and analyzed the second test results and concluded they were successful until after April 13, 1987. The Court reversed the board and awarded priority to Estee Lauder, L'Oreal appeals.
Issue
The main issue is whether Estee Lauder established that it successfully reduced its invention to practice before the critical date of April 13, 1987; and where testing is required to establish utility, must there be some recognition of successful testing prior to the critical date for an invention to be reduced to practice?
Rule
The inventor must know that the invention will work for its intended purpose before it can be reduced to practice.
Holding
Estee Lauder did not reduce invention to practice before critical date. Although testing may have been complete, the test results were not received, analyzed, nor proven successful prior to the critical date. The judgment of the United States District Court for the District of Columbia is reversed, and priority is awarded to L'Oreal.
Analysis
The United States Court of Appeals said to prove actual reduction to practice, an inventor must establish that he actually prepared the composition and knew it would work. Hahn v. Wong, 892 F.2d 1028 (Fed. Cir. 1989) states that an inventor must show that he “knew that it would work†to be able to reduce the invention to practice. Therefore, a reduction to practice cannot occur without the knowledge that the invention will work for its intended purpose. In this case, Estee Lauder did not receive any indication that their second set of tests was successful until after the critical date. The lower court had already determined that the presence of CuDIPs in the first tests had not been established by the evidence. Therefore, there was no indication by a preponderance of evidence that Estee Lauder knew that the invention would work for its intended purpose and without such knowledge the invention could not have been reduced to practice prior to the critical date.