Opinion
95 Civ. 8833 (RPP)
January 18, 2002
Counsel for Plaintiff, Fitzpatrick, Celia, Harper Scinto, New York, NY.
Counsel for Defendants, Clifford Chance Rogers Wells LLP, New York, NY. Gaynell C. Methvin, Esq. Dallas, TX.
OPINION AND ORDER
Bristol-Myers Squibb Company ("Bristol") moves for reconsideration of the Court's Opinion and Order of November 26, 2001, denying Bristol's motion for summary judgment for Rhone-Poulenc Rorer, Inc.'s ("RPR") failure to disclose their best mode pursuant to 35 U.S.C. § 112. Bristol argues that, contrary to the Court's conclusion, a person of ordinary skill in the art (a "POSA") would not have had access to the JACS article when seeking to practice the invention because the appropriate date for determining disclosure of the best mode is the filing date for the French priority patent, not the filing date of the application for the `011 patent. See Transco Prod., Inc. v. Performance Contracting, Inc., 38 F.3d 551, 558 (Fed. Cir. 1994). Bristol also seeks to have the Court issue an order, pursuant to Rule 56(d) of the Federal Rules of Civil Procedure, that the inventors had a best mode of 100 hours for the esterification reaction.
Bristol's motion for reconsideration is denied. In denying Bristol's motion for summary judgment, the Court relied on Dr. Ojima's declaration that a POSA would allow the duration of an experiment under the patented process to proceed until the desired yield was obtained. (Ojima Decl. at ¶¶ 12, 13.) That a POSA would have had access to the JACS article by the date of the U.S. application was only a secondary consideration. Accordingly, Bristol's contention, that the Court should not have considered the JACS article as enabling a POSA to practice the invention because the best mode analysis date should have been the date of the filing of the patent application for the French patent rather than for the `011 patent, would not change the Court's decision.
With regard to Bristol's request for a finding, pursuant to Rule 56(d), that the inventors had a best mode of a 100 hour esterification reaction, that request is denied. The Court did not fully consider whether no genuine issue of material fact existed as to whether the inventors' 100 hour period for the esterification reaction (disclosed in the invention disclosure statement and the JACS article) was, in fact, the inventors' best mode because the Court denied Bristol's summary judgment motion on the absence of evidence of concealment of the best mode. Though the Court did state, in reaching the issue of concealment, that "the record demonstrates that the inventors did have a best mode of 100 hours of esterification reaction time," the Court made that determination based largely on RPR's statements that the description of the inventors' process contained in the JACS article should be considered to be the "best mode" or "preferred embodiment." (Opinion and Order dated November 26, 2001; Solander Decl., Ex. 45 at 5; Ex. 48 at 8.)
Having now fully reviewed the issue of whether a genuine issue of fact exists as to whether the inventors had a best mode of 100 hours for the esterification reaction, including having reviewed the inventors' declarations that they did not have a best mode for the esterification reaction, the Court finds that RPR did raise a genuine issue of material fact as to whether the inventors had, and failed to disclose, a best mode. (Bock Decl., Exs. 9, 40.)
The motion for reconsideration is denied.
IT IS SO ORDERED.