Ur-Rehman et al.v.Tossavainen et al.

Patent Trials and Appeals Board

May 28, 2013

11641468 - (J) (P.T.A.B. May. 28, 2013)

1 

Mail Stop Interference Paper 323
P.O. Box 1450 Filed: 28 May 2013
Alexandria, VA 22313-1450
Tel: 571-272-4683
Fax: 571-273-0042

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________________

BEFORE PATENT TRIAL AND APPEAL BOARD

_______________________

SELECT MILK PRODUCERS, INC.
Junior Party
(U.S. Patent Application 11/641,468)

v.

VALIO, LTD
Senior Party
(U.S. Patent 7,829,130),

________________________

Patent Interference No. 105,813
(Technology Center 1700)
______________________
Judgment
Before: RICHARD TORCZON, SALLY GARDNER LANE, and DEBORAH KATZ,
Administrative Patent Judges.

KATZ, Administrative Patent Judge.

Further to the Decision on Priority (Paper 322), finding that SMP failed to prove a 1 
date of conception earlier than the date accorded to Valio as to Count 1, it is Ordered 2 
that judgment is awarded against SMP. 3 
2 

Further Ordered that claims 7-10 of SMP application 11/641,468 are finally 1 
refused. 35 U.S.C. § 135(a). 2 
Further Ordered that attention is directed to 35 U.S.C. § 135(c) and Bd.R. 205 3 
regarding the filing of settlement agreements. 4 
Further Ordered that a copy of the Judgment shall be placed in the files of (1) 5 
SMP application 11/641,468 and (2) Valio patent 7,829,130. 6 

cc (electronic mail):

Counsel for Valio:

Bruce J. Boggs, Jr., Esq.
Adda C. Gogoris, Esq.
MERCHANT & GOULD P.C.
Email: jboggs@merchantgould.com 
Email: adda@merchantgould.com  

Counsel for Select Milk Producers:

Cameron K. Weiffenbach, Esq.
James T. Carmichael, Esq.
MILES & STOCKBRIDGE, P.C.
Email: cweiffenbach@milesstockbridge.com 
Email: jcarmich@milesstockbridge.com  

Lekha Gopalakrishnan, Esq.
WINSTEAD PC
Email: lgopalakrishnan@winstead.com 

1 

Mail Stop Interference Paper 322
P.O. Box 1450 Filed: 28 May 2013
Alexandria, VA 22313-1450
Tel: 571-272-4683
Fax: 571-273-0042

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________________

BEFORE PATENT TRIAL AND APPEAL BOARD
_______________________

SELECT MILK PRODUCERS, INC.
Junior Party
(U.S. Patent Application 11/641,468)

v.

VALIO, LTD
Senior Party
(U.S. Patent 7,829,130),

_______________________

Patent Interference No. 105,813
(Technology Center 1700)
______________________
Decision on Priority – Bd.R. 125(a) 1 
Before: RICHARD TORCZON, SALLY GARDNER LANE, and DEBORAH KATZ, 2 
Administrative Patent Judges. 3 
4 
KATZ, Administrative Patent Judge. 5 
6 
I. Statement of the Case 7 
Priority motions for both Select Milk Producers, Ltd. (‘SMP”) and Valio, Ltd. 8 
(“Valio”) are before us. 9 
2 

Previously, we determined that SMP was not entitled to the benefit of priority as 1 
to the Count for U.S. application 10/229,462 (“the ‘462 application”), which was filed 27 2 
August 2002. (See Decision on Motions (“Decision”), Paper 177, at 12-16.) We also 3 
accorded Valio the benefit of priority as to the Count of Finnish application 20020907, 4 
which was filed 14 May 2002. (See id. at 21-25.) In light of these decisions, Valio 5 
became the Senior Party, with a constructive reduction to practice date of 14 May 2002, 6 
and SMP became the Junior Party, with a constructive reduction to practice date of 7 
18 December 2006, the filing date of its involved application. (See Redeclaration, 8 
Paper 178.) 9 
Both parties have filed Priority Statements. SMP puts forth a conception date of 10 
mid-July 1998, the date of its earliest alleged corroborated actual reduction to practice 11 
and the date on which diligence allegedly began. (Select Milk Producers Priority 12 
Statement, Paper 26.) Valio puts forth a conception date of 1 May 2001, which it also 13 
alleges is the date of its earliest actual reduction to practice and the date on which 14 
diligence allegedly began. (Valio Priority Statement, Paper 33.) 15 
The parties have the burden of proving priority with a preponderance of the 16 
evidence. Bd.R. 207(a)(2). To meet this burden, they cannot rely on the inventors’ 17 
testimony alone, but must provide corroborating evidence. See Price v. Symsek, 988 18 
F.2d 1187, 1194 (Fed.Cir.1993) (“an inventor's testimony respecting the facts 19 
surrounding a claim of derivation or priority of invention cannot, standing alone, rise to 20 
the level of clear and convincing proof.”). 21 
As discussed below, SMP fails to meet its burden of proving that it conceived of 22 
the subject matter of the Count before Valio’s earliest accorded priority date. 23 
3 

Accordingly, we deny SMP’s motion for priority (SMP Motion 5). We do not reach 1 
Valio’s motion for priority (Valio Motion 6) in light of this decision. 2 
Both parties also present motions to exclude certain evidence. (Valio Motion 7, 3 
Paper 303; SMP Motion 6, Paper 301.) We determine Valio’s request to be moot 4 
because even when we consider the evidence that Valio seeks to exclude, we deny 5 
SMP’s motion for priority. We also determine that SMP’s requests to exclude evidence 6 
are moot because we do not rely on the evidence that SMP challenges, being relevant 7 
to Valio’s motion for priority, which we do not reach. 8 
II. SMP’s Priority Case 9 
The Count is Valio claim 1, which recites: 10 
A process for producing a lactose-free milk product, having a ratio 11 
of protein to carbohydrates of about 1, comprising the steps of 12 
a) ultrafiltering milk to obtain a final UF retentate and UF permeate, 13 
b) nanofiltering the UF permeate obtained from the ultrafiltration of 14 
step a) to obtain an NF retentate and NF permeate, 15 
c) concentrating the NF permeate obtained in step b) by reverse 16 
osmosis to obtain an RO retentate and RO permeate, 17 
d) adding the RO retentate obtained in step c) as a salt directly to 18 
the final UF retentate of step a), to produce a milk base and 19 
e) hydrolyzing lactose in the milk base product by means of lactase 20 
to produce a lactose free milk product. 21 
22 
(Declaration, Paper 1, at 3; Valio Clean Copy of Claims, Paper 11.) In the process of the 23 
invention, a lactose-free milk product having a ratio of protein to carbohydrates of about 24 
1 is produced by passing milk through three filters: ultrafiltration (UF), nanofiltration 25 
(NF), and reverse osmosis (RO) filters. The milk is passed through these filters in 26 
successive steps, resulting in a retentate (the portion retained by the filter) and a 27 
permeate (the portion that passes through the filter) of each step. The retentates of the 28 
4 

UF and RO filtration steps are then combined to produce a milk base, which is treated 1 
with lactase to hydrolyze any lactose present. 2 
SMP moves to be awarded priority of this subject matter because it argues that 3 
the named inventors of the SMP ‘468 application were the first to conceive and reduce it 4 
to practice or, if the inventors were second to reduce it to practice, that they were 5 
reasonably diligent. (Select Milk Producers Motion 5 – SMP Motion on Priority (“SMP 6 
Motion 5”), Paper 183, at 5:2-7.) Valio opposes (Valio Opposition 5, Paper 291) and 7 
SMP replies to Valio’s Opposition (Paper 305). 8 
Findings of Fact 9 
We make the following findings of fact (“FF”) regarding SMP’s priority case. 10 
These FFs, as well as others made elsewhere in the Opinion, are supported by a 11 
preponderance of the evidence on the record. 12 
1. Timothy J. Gomez and Michael J. McCloskey are inventors named in the 13 
SMP involved application, 11/641,468. 14 
2. Mr. Gomez and Mr. McCloskey testify that they were experimenting with 15 
RO and UF techniques for producing ice cream in 1997 and early 1998. (Declaration of 16 
Timothy J. Gomez, 29 October 2012 (“Gomez Decl.”), Exh. 1034, ¶¶ 4 and 5; 17 
Declaration of Michael J. McCloskey, 1 November 2012 (“McCloskey Decl.”), Exh. 18 
1035, ¶¶ 5 and 6.) 19 
3. Mr. McCloskey testifies that in the spring of 1998, he was experimenting 20 
with a technique in which (1) milk was passed through a UF membrane to obtain a UF 21 
retentate and a UF permeate, (2) the UF permeate was passed through an RO 22 
membrane to obtain an RO retentate and an RO permeate, and (3) the RO permeate 23 
5 

was added to the UF retentate to obtain a milk product that had the fat and protein 1 
content of regular milk, with 70% of the lactose removed. (McCloskey Decl., Exh. 1035, 2 
¶ 8.) 3 
4. Charles Sapp testifies that he is the former Senior Vice President for H.E. 4 
Butt (“HEB”) grocery chain and that he had been acquainted with Mr. McCloskey since 5 
1992 or 1993 and knew of his work. Mr. Sapp testifies that he participated in a Steering 6 
Committee of SMP personnel and others interested in developing and marketing 7 
specialized milk products. (Declaration of Charles Sapp, 23 October 2012, (“Sapp 8 
Decl.”), Exh. 1036, at ¶¶ 1-3.) 9 
5. Earl Connelly testifies that he is the founder and president of Brotech, Inc., 10 
a dairy consulting and technical sales firm, and that he was acquainted with Mr. 11 
McCloskey as a result of Mr. Sapp’s involvement on the Steering Committee regarding 12 
designer milk products. (Declaration of Earl Connolly, 31 October 2012 (“Connolly 13 
Decl.”), Exh. 1037, ¶¶ 1-3.) 14 
6. Mr. Sapp and Mr. Connolly testify that in mid-1998 Mr. McCloskey was 15 
focusing on using UF and RO to separate components of milk and to recombine them in 16 
varying quantities to produce milk having specialized attributes. (Sapp Decl., Exh. 17 
1036, ¶ 4; Connolly Decl., Exh. 1037, ¶ 5.) 18 
7. Mr. McCloskey, Mr. Sapp, and Mr. Connolly testify that they met in May 19 
1998 in Kansas City to discuss various types of milks with different filtration techniques. 20 
(McCloskey Decl., Exh. 1035, ¶ 7; Sapp Decl., Exh. 1036, ¶ 3; Connolly Decl., Exh. 21 
1037, ¶ 4.) 22 
6 

8. Mr. McCloskey and Mr. Connolly testify that at the meeting with Mr. Sapp 1 
on May 1998, a milk composition with a protein to carbohydrate ratio of about 1 was 2 
discussed. (McCloskey Decl., Exh. 1035, ¶ 7; Connolly Decl., Exh. 1037, ¶ 4.) 3 
9. Mr. Sapp and Mr. Connolly present Exhibit 1 to their declarations, which 4 
appear to be the same. The exhibit includes copies of memos from Charles Sapp to the 5 
Steering Committee, dated 4 July, 5 July, and 6 July 1998. (Sapp Decl., Exh. 1036, ¶ 4, 6 
Exhibit 1; Connolly Decl., Exh. 1037, ¶ 6, Exhibit 1.) 7 
10. The memos of Exhibit 1 to Mr. Sapp’s and Mr. Connolly’s declarations 8 
refer to UF and RO filtration of milk and discuss the problem of unsatisfactory flavor due 9 
to loss of salts and minerals (4 July 1998 memo). The memos also report on 10 
experiments in which salts and minerals were to be added to RO filtration fractions (5 11 
July 1998 memo) and UF filtration fractions (6 July 1998 memo). (Sapp Decl., Exh. 12 
1036, Exhibit 1; Connolly Decl., Exh. 1037, Exhibit 1.) 13 
11. The memos of Exhibit 1 to Mr. Sapp’s and Mr. Connolly’s declarations do 14 
not provide discussion of a protein: carbohydrates ratio of about 1 or of the use of 15 
lactase enzyme. 16 
12. Mr. McCloskey testifies that on 20 July 1998 he realized that the 17 
membranes he had been using as RO membranes were, in effect, NF membranes 18 
because they did not have a pore size as small as specified. (McCloskey Decl., Exh. 19 
1035, ¶ 10; Gomez Decl., Exh. 1034, ¶ 8.) 20 
13. Mr. McCloskey and Mr. Gomez testify that on 20 July 1998 they realized 21 
that a three-step filtration process, which includes UF, NF, and RO, could be used to 22 
create a range of “designer milk” products by picking and choosing among the retentate 23 
7 

and permeate products of each of the three filtration steps and combining these in 1 
varying amounts to change the relative amounts of various elements in the final product. 2 
(McCloskey Decl., Exh. 1035, ¶ 11; Gomez Decl., Exh. 1034, ¶ 10) 3 
14. Mr. Gomez testifies: 4 
We quickly came to conceive of a process of passing milk through 5 
an ultrafiltration membrane to form an ultrafiltration permeate and 6 
utrafiltration retentate, followed by passing the ultrafiltration permeate 7 
through a nanofiltration membrane to form a nanofiltration permeate and 8 
nanofiltration retentate, passing the nanofiltration permeate through a 9 
reverse osmosis membrane to form a reverse osmosis permeate and a 10 
reverse osmosis retentate. Following the membrane filtration steps, the 11 
ultrafiltration retentate and reverse osmosis retentate were combined to 12 
form a milk product. In addition, because it was well known in the 13 
industry, as noted above, to use lactase to convert lactose into glucose 14 
and galactose, we realize that if any lactose remained in the milk product 15 
we could add a small amount of lactase to remove it without significantly 16 
affecting the sweetness profile. 17 
18 
(Gomez Decl., Exh. 1034, ¶ 9.) 19 
15. Mr. McCloskey testifies: 20 
Over the following months Mr. Gomez and I continued to develop 21 
our concept and to run samples of various milk products using the filtration 22 
steps (a) through (d) set forth in the Count. That is, we would ultrafilter 23 
milk to obtain a final UF retentate and final UF permeate; nanofilter the UF 24 
permeate to obtain an NF retentate and NF permeate; concentrate the NF 25 
permeate using reverse osmosis to obtain an RO permeate and RO 26 
retentate; and add the RO retentate to the UF retentate to produce a milk 27 
base. For those versions of milk that were designed to be lactose-free, we 28 
utilized the final step (e) of the Count and hydrolyzed the remaining 29 
lactose in the milk base of step (d) using lactase. 30 
31 
(McCloskey Decl., Exh. 1035, ¶ 15.) 32 
16. Mr. Sapp and Mr. Connolly corroborate Mr. McCloskey’s testimony that on 33 
20 July 1998, Mr. McCloskey learned that the RO membrane he had been using had a 34 
larger pore size and was, in effect, an NF membrane and that he realized the possibility 35 
8 

of using a three-step filtration process comprising UF, NF, and RO. (Sapp Decl., Exh. 1 
1036, ¶¶ 6-7; Connolly Decl., Exh. 1037, ¶¶ 8-9.) 2 
17. Mr. Sapp and Mr. Connolly testify that “[i]t had always been known and 3 
discussed amongst our group and known in the art that whatever lactose remained 4 
following a filtration process could be removed by hydrolysis using lactase to produce a 5 
lactose-free product. It was also well known to our group that the several permeates 6 
and retentates produce from filtration steps could be recombined in different amounts to 7 
products having a wide range of possible ratio[]s of protein to carbohydrate, including 8 
about 1.” (Sapp Decl., Exh. 1036, ¶ 7; Connolly Decl., Exh. 1037, ¶ 9.) Mr. Connolly 9 
adds that a product with a protein to carbohydrate ratio of about 1 was discussed at the 10 
Kansas City meeting. (Connolly Decl., Exh. 1037, ¶ 9.) 11 
18. Mr. Gomez testifies that it was well known in the dairy industry to use the 12 
enzyme lactase to convert lactose into other sugars through hydrolysis, resulting in low-13 
lactose or lactose-free milk. (Gomez Decl., Exh. 1034, ¶ 11; see also McCloskey Decl., 14 
Exh. 1035, ¶ 12.) 15 
19. Mr. McCloskey testifies that step (e) of the Count was known to Mr. 16 
Gomez and himself in 1998 that they began to create samples adding lactase to the 17 
milk base as a final step in the process. (McCloskey Decl., Exh. 1035, ¶ 12.) 18 
20. U.S. Patent 4,957,752 was issued 18 September 1990, and states: “In a 19 
milk subjected to ultrafiltration the ratio protein-lactose is 1:1.1 which, in addition to the 20 
aforesaid, provides a positive effect on the assimilability of the product.” (U.S. Patent 21 
4,957,752, Exh. 1054, at 5:1-4.) 22 
9 

21. Mr. Gomez testifies that on or about 28 June 2001, he and Mr. McCloskey 1 
met in St. Louis to discuss various “designer milk” products that would be marketable 2 
using the membrane filtration techniques they had been developing since 1998, 3 
including a lactose-free milk using UF, NF, and RO steps followed by lactase treatment. 4 
(Gomez Decl., Exh. 1034, ¶ 13.) 5 
22. Mr. Gomez provides Exhibit C to his declaration, which is reproduced 6 
below. 7 
10 

1 
23. Mr. Gomez testifies that Exhibit C to his declaration shows the passage of 2 
skim milk through a UF filtration system, an NF filtration system, and an RO membrane 3 
system, as well as “the preparation of a blend [shown in the box] using cream, UF 4 
concentrate, NF concentrate and/or RO concentrate in ‘some combination to achieve [a] 5 
desired product.’” (Gomez Decl., Exh. 1034, ¶ 15.) 6 
24. On cross-examination, Mr. Gomez testified as follows: 7 
11 

Q. Does this page [Exhibit C] describe a lactose-free product that has a protein to 1 
carbohydrate ratio of about one? 2 
3 
A. This page does not describe that. 4 
(Deposition of Tim Gomez, 18 February 2013, Exh. 2081, at 22:9- 26:4.) 5 
25. Mr. McCloskey testifies that after 28 June 2001, he and Mr. Gomez began 6 
to run the three-step filtration process regularly at an SMP facility using steps (a) 7 
through (d) of the Count, and including lactase to remove lactose as set forth in step (e) 8 
of the Count. Mr. McCloskey states that he “understand[s] that Mr. Gomez has notes 9 
from October and December 2001 that document several of these trials.” (McCloskey 10 
Decl., Exh. 1035, ¶ 17.) 11 
26. Mr. Gomez testifies that from June to December 2001, he performed a 12 
three-step membrane filtration process at SMP’s facility and that by December 2001. 13 
Mr. Gomez testifies that he and Mr. McCloskey had determined the operability of three-14 
step membrane filtration process of ultrafiltration, nanofiltration, and reverse osmosis, 15 
followed by the combination of ultrafiltration retentate with reverse osmosis retentate to 16 
form a milk product, and adding lactase to remove any residual lactose in the milk 17 
product. (Gomez Decl., Exh. 1034, ¶ 16.) 18 
27. Mr. Gomez provides Exhibit D to his declaration, which he testifies shows 19 
notes of a pilot run of the reverse osmosis step dated 4 October 2001. Mr. Gomez 20 
testifies that in this pilot run he was testing the concentration factor of the reverse 21 
osmosis membrane system, which indicates the amount of water removed from the 22 
starting material during reverse osmosis. (Gomez Decl., Exh. 1034, ¶ 17.) 23 
12 

28. Mr. Gomez provides Exhibit E to his declaration, which he testifies shows 1 
a summary and notes regarding “Atkins Diet Milk Drink.” (Gomez Decl. Exh. 1034, 2 
¶ 18.) 3 
29. Mr. Gomez testifies that the page labeled “P.007” of Exhibit E to his 4 
declaration shows a summary and notes prepared of a pilot test run on 4 December 5 
2001. Mr. Gomez testifies that the summary and notes on P.007 describe preparation 6 
of an Atkins Diet Milk Drink by separating whole milk into skim and cream, passing the 7 
resulting skim milk through successive UF, NF, and RO steps of the previous permeate 8 
fraction, and combining the UF retentate and RO retentate. (Gomez Decl. Exh. 1034, 9 
¶ 18.) 10 
30. Mr. Gomez does not testify that preparation of the “Atkins Diet Milk Drink” 11 
described on P.007 of Exhibit E includes hydrolyzing the lactose in the combination of 12 
the UF retentate and RO retentate by mean of lactase to produce a lactose free milk 13 
product. 14 
31. Mr. Gomez testifies that the page labeled “P.008” of Exhibit E to his 15 
declaration describes preparation of an Atkins Diet drink with fat by successive UF, NF, 16 
and RO filtration and, finally, combining the UF retentate and RO retentate. (Gomez 17 
Decl. Exh. 1034, ¶ 19.) 18 
32. Mr. Gomez does not testify that preparation of the Atkins Diet drink 19 
described on P.008 of Exhibit E includes hydrolyzing the lactose in the combination of 20 
the UF retentate and RO retentate by mean of lactase to produce a lactose free milk 21 
product. 22 
13 

33. Mr. Gomez testifies that the page labeled “P.009” of Exhibit E to his 1 
declaration describes preparation of an Atkins Diet drink without fat by separating milk 2 
into cream and skim, processing the skim by UF, NF, and RO filtration and combining 3 
the UF retentate and RO retentate. (Gomez Decl. Exh. 1034, ¶ 20.) 4 
34. Mr. Gomez does not testify that preparation of the Atkins Diet drink 5 
described on P.009 of Exhibit E includes hydrolyzing the lactose in the combination of 6 
the UF retentate and RO retentate by means of lactase to produce a lactose free milk 7 
product. 8 
35. Mr. Gomez testifies that the page labeled “P.0012” of Exhibit E to his 9 
declaration provides notes of a meeting on 10 December 2001in which he and Mr. 10 
McCloskey discussed the Atkins Diet drink, which had a 90% reduction of lactose, 11 
among other identified components. (Gomez Decl. Exh. 1034, ¶ 21.) 12 
36. Mr. McCloskey testifies that he and Mr. Gomez were interested in 13 
producing a “designer milk” called “Atkins Diet” milk, which had a protein to 14 
carbohydrates ratio of about 3:1, representing reduced carbohydrates. (McCloskey 15 
Decl., Exh. 1035, ¶ 13.) 16 
37. SMP admits that the protein to carbohydrates ratio of the product from 17 
each of the trials provided in Exhibit E of Mr. Gomez’s declaration ranged from 2.1:1 to 18 
2.5:1. (SMP Reply 5, Paper 305, response to FF 113; id. at 13:12-15.) 19 
38. Mr. Gomez testifies that during the time period of the trials described in 20 
Exhibit E to his declaration, John Dunker, who is described as a dairy consultant, “was 21 
present for and observed several trials comprising our practice of steps (a) through (e) 22 
14 

of the Count, including our addition of lactase to remove remaining lactose.” (Gomez 1 
Decl. Exh. 1034, ¶ 22.) 2 
39. Mr. Gomez testified as follows on cross-examination: 3 
Q. Mr. Gomez, we've been through all the exhibits in your declaration. Do 4 
you have any documents that show a lactose-free milk product having a 5 
protein to carbohydrate ratio of about one produced by combining an 6 
ultrafiltration retentate and a reverse osmosis retentate from an 7 
ultrafiltration, nanofiltration and reverse osmosis filtration process? 8 
9 
A. No, I don't have any document that shows that. 10 
11 
(Gomez Deposition, Exh. 2081, at 32:8-33:7.) 12 
Analysis 13 
SMP argues that it should be awarded priority because the named inventors 14 
conceived the subject matter of the Count by 20 July 1998 and had an actual reduction 15 
to practice by 28 June 2001, that is, before Valio’s filing date of 14 May 2002. (SMP 16 
Motion 5, Paper 183, at 6.) SMP also argues that the inventors exercised reasonable 17 
diligence until 18 December 2006. (Id.) 18 
Valio is not entitled to its involved claims if SMP shows that it anticipated Valio’s 19 
invention whithin the meaning of 35 U.S.C. § 102(g)(1). To anticipate the Count, SMP 20 
may show that it conceived of the subject matter and reduced it to practice before Valio 21 
did. SMP could still prevail if its inventors conceived of the subject matter first, but 22 
reduced it to practice after Valio and were diligent in reducing it to practice from a time 23 
prior to Valio’s conception. (35 U.S.C. § 102(g).) If SMP fails, SMP is not entitled to its 24 
claims. 25 
Conception is the formation in the mind of the inventor, of a definite and 26 
permanent idea of the complete and operative invention, as is to be applied in practice, 27 
15 

See Invitrogen Corp. v. Clontech Labs., Inc., 429 F.3d 1052, 1063 (Fed. Cir. 2005). An 1 
idea is definite and permanent when the inventor has a specific, settled idea, a 2 
particular solution to the problem at hand, not just a general goal or research plan he 3 
hopes to pursue. See Fiers v. Revel, 984 F.2d 1164, 1169, 25 USPQ2d 1601, 1605 4 
(Fed.Cir.1993). “The conception analysis necessarily turns on the inventor's ability to 5 
describe his invention with particularity. Until he can do so, he cannot prove possession 6 
of the complete mental picture of the invention.” Burroughs Wellcome Co. v. Barr 7 
Laboratories, Inc., 40 F.3d 1223, 1228 (Fed. Cir. 1994). Conception must encompass 8 
all limitations of the count. See Singh v. Brake, 317 F.3d 1334, 1340 (Fed. Cir. 2002). 9 
Whether the subject matter of the Count would have been obvious to those of 10 
skill in the art is irrelevant to the question of whether the inventors conceived of it. “For 11 
conception, we look not to whether one skilled in the art could have thought of the 12 
invention, but whether the alleged inventors actually had in their minds the required 13 
definite and permanent idea.” Burroughs Wellcome Co. v. Barr Laboratories, Inc., 40 14 
F.3d 1223, 1232 (Fed. Cir. 1994). See Dawson v. Dawson, 710 F.3d 1347, 1356 (Fed. 15 
Cir. 2013) (“In the context of U.S. patent law, this court has distinguished conception 16 
from obviousness,” citing Burroughs, 40 F.3d at 1232). 17 
SMP’s Evidence of Conception 18 
SMP points to testimony that before 20 July 1998 Mr. McCloskey and Mr. Gomez 19 
worked with different membranes and could control levels of various components, for 20 
example producing a milk with 70% of the lactose of regular milk. (See SMP Motion 5, 21 
Paper 183, at 11:9-14 and 12:4-13:3; FFs 2 and 3; Gomez Decl., Exh. 1034, ¶¶ 4 and5; 22 
McCloskey Decl., Exh. 1035, ¶¶ 5, 6, and 8.) SMP also presents evidence in Exhibit 1 23 
16 

of Mr. Sapp’s and Mr. Connolly’s declarations that the Steering Committee was aware 1 
of using filtration techniques particularly RO and UF, to obtain milk products with 2 
different concentrations and was also aware that salts needed to be added back for 3 
acceptable taste. (See SMP Motion 5, paper 183, at 14:2-15:8; FFs 4-11; Sapp Decl., 4 
Exh. 1036, ¶¶ 1-4 and Exhibit 1; Connolly Decl., Exh. 1037, ¶¶ 1-6 and Exhibit 1.) Mr. 5 
McCloskey and Mr. Gomez testify that once they realized they had been using an NF 6 
membrane instead of an RO membrane, they conceived of the idea to use all three (UF, 7 
NF, and RO) and to combine the UF and RO retentates, as well as to hydrolyze any 8 
remaining lactose with lactase enzyme. (See SMP Motion 5, Paper 183, at 16:9-18:4; 9 
FFs 12-15; Gomez Decl., Exh. 1034, ¶¶ 8-10; McCloskey Decl., Exh. 1035, ¶¶ 10, 11, 10 
and 15.) 11 
Mr. Sapp and Mr. Connolly corroborate the inventors’ testimony that Mr. 12 
McCloskey realized that UF, NF, and RO filtration could be used and that it was known 13 
that several permeates and retentates could be combined to produce a wide range of 14 
ratios of components. (See SMP Motion 5, paper 183, at 20:20-21:13; FFs 16 and 7; 15 
Sapp Decl., Exh. 1036, ¶¶ 6-7; Connolly Decl., Exh. 1037, ¶¶ 8-9.) But, Mr. Sapp and 16 
Mr. Connolly do not corroborate Mr. McCloskey’s and Mr. Gomez’s testimony that they 17 
contemplated combining the UF retentate and RO retentate. (See Valio Opp. 5, Paper 18 
291, at 15:17-16:4.) As the uncorroborated evidence of inventors, Mr. McCloskey’s and 19 
Mr. Gomez’s testimony carries little weight. See Price, 988 F.2d at 1194. Furthermore, 20 
SMP does not point to evidence that any of the named inventors had a definite plan of 21 
combining the filtration fractions to produce a product with a protein to carbohydrates 22 
ratio of 1 or of using lactase to produce a lactose-free product. (See Valio Opp. 5, 23 
17 

Paper 291, 16:14-16 and 17:14-16.) Instead, Mr. McCloskey and Mr. Gomez had only a 1 
general goal or plan to use a three-step filtration process to produce undefined 2 
“designer milk” products. (See Valio Opp. 5, Paper 291, at 7:24-8:2.) 3 
Though SMP argues that Mr. McCloskey and Mr. Gomez could have conceived 4 
of the specific subject matter of the Count or would have had reason to conceive of the 5 
subject matter of the Count (see SMP Reply 5, Paper 305, at 5:2-7:23), SMP fails to 6 
present corroborated evidence that they actually did conceive of that specific subject 7 
matter. It may have been known that a protein to carbohydrates ratio of 1 improved 8 
lactose-free milk (see SMP Motion 5, at Paper 183, at 11:20-12:3; FF 20; U.S. Patent 9 
4,957,752, Exh. 1054, at 5:1-4) and it may have been known to add lactase to achieve 10 
lactose-free milk (see SMP Motion 5, Paper 183, at 15:19-16:3; FFs 18-19; Gomez 11 
Decl., Exh. 1034, ¶ 11; McCloskey Decl., Exh. 1035, ¶ 12), but SMP has not directed us 12 
to corroborated evidence showing that its inventors had a definite plan to carry out each 13 
step of the Count to achieve the stated product. 14 
SMP’s burden is not to prove that the subject matter of the Count is obvious, but 15 
to show that the named inventors had a definite and permanent plan that anticipated the 16 
Count. As we noted in our previous Decision in this Interference discussing SMP's 17 
putative constructive reduction to practice, evidence that the process of the Count would 18 
have been obvious over the general plan provided in SMP’s prior ‘462 application is not 19 
evidence of an anticipation of the Count. 1 (See Decision, Paper 177, at 15:17-20.) 20 
Similarly, SMP’s evidence that it would have been obvious to conceive of the method of 21 
the Count is not evidence that the inventors conceived the recited method. 22 

1 Although SMP argues that its prior application 10/229,462 discloses a process as
recited in the Count (SMP Reply 5, Paper 305, at 14:1-7), we held otherwise. 
18 

SMP’s Evidence of Reduction to Practice 1 
SMP argues that it reduced to practice the method of the Count on 28 June 2001 2 
when Mr. Gomez drew a schematic diagram, a copy of which is provided in Exhibit C to 3 
his declaration, of a three-step filtration method during a meeting with Mr. McCloskey. 4 
(See SMP Motion 5, Paper 183, at 24:20-26:11, citing Gomez Decl., Exh. 1034, ¶¶ 13-5 
15, Exhibit C, and McCloskey Decl., Exh. 1035, ¶ 16; FF 22.) But, Mr. Gomez’s 6 
statements and diagram are not persuasive of either conception or a reduction to 7 
practice of the subject matter of the Count for the same reasons that the evidence of a 8 
20 July 1998 conception is insufficient. (See Valio Opp. 5, Paper 291, at 22:3-23:2.) 9 
The diagram indicates that the retentates of any or all filtrations could be combined by 10 
stating that “some combination” can be made of retentates to achieve a “desired 11 
product.” (See FF 23; Gomez Decl., Exh. 1034, ¶ 15.). Furthermore, Exhibit C does not 12 
describe how to obtain a lactose-free product with a protein to carbohydrates ratio of 13 
about 1. (FF 24; Gomez Deposition, Exh. 2081, 22:9-26:4; see Valio Opp. 5, Paper 14 
291, at 22:3-21.) The evidence pointed out to us fails to show that the inventors were 15 
even considering the protein:carbohydrates ratio when contemplating what they would 16 
do with the three filtration techniques or had contemplated subjecting the result of any of 17 
the combinations to hydrolysis with lactase. (See Valio Opp. 5, Paper 291, at 25:13-18 
26:7.) Thus, this evidence fails to show that the SMP inventors contemplated the 19 
limitations of the method recited in the Count, much less reduced them to practice. 20 
SMP argues that only minimum experimentation was required to obtain a product 21 
with a protein:carbohydrates ratio of about 1 (SMP Reply 5, Paper 305, at 8:29-9:2.) 22 
But, this argument addresses only whether the method of the Count would have been 23 
19 

obvious, not whether the SMP inventors conceived and reduced an anticipation of it to 1 
practice. 2 
SMP points to further evidence of an actual reduction to practice in December 3 
2001 in Atkins Diet milk product trial runs, which are reported to include combining the 4 
UF and RO retentates. (SMP Motion 5, Paper 183, at 26:16-27:19; FFs 26-35; Gomez 5 
Decl., Exh. 1034, ¶¶ 16-21.) As Valio argues, these trial runs do not demonstrate 6 
production of milk products with protein to carbohydrates ratio of about 1. (Valio Opp. 5, 7 
Paper 291, at 24:7-25:1 and 27:7-21.) Instead, SMP admits that the milk products 8 
produced in the trials had protein to carbohydrates ratios of between 2.1:1 and 2.5:1. 9 
(FF 37; SMP Reply 5, Paper 305, response to Material Fact 113; id. at 13:12-15; see 10 
Valio Opp. 5, Paper 291, at 24:12-15, FF 113.) Because “Atkins Diet” milk products 11 
were intended to reduce the amount of carbohydrates resulting in a 12 
protein:carbohydrates ratio of 3:1 (FF 36; McCloskey Decl., Exh. 1035, ¶ 13), it follows 13 
that these trial runs were not intended to produce a milk product with a protein to 14 
carbohydrate ratio of about 1. Thus, the trial runs in December 2001 do not provide 15 
evidence that the inventors reduced to practice, or had even conceived of, a method of 16 
making a milk product by the filtration steps recited with the required ratio of protein to 17 
carbohydrates. That SMP may have contemplated producing other milk products with 18 
that ratio (SMP Reply 5, paper 305, at 10:12-15) is not relevant to whether the evidence 19 
demonstrates that the inventors produced a milk product of the claimed ratio with the 20 
steps recited in the Count. 21 
Mr. Gomez’s notes also fail to show evidence of hydrolysis of lactose in the milk 22 
base product by means of lactase to produce a lactose free milk product. Mr. Gomez 23 
20 

testifies that while the trials in December 2001 were being run, Mr. Dunker, a dairy 1 
consultant, observed lactase being added to remove the remaining lactose from the milk 2 
product. (FF 38, Gomez Decl., Exh. 1034, ¶ 22; see also McCloskey Decl., Exh. 1035, 3 
¶ 15.) Mr. Dunker, though is vague about which trials he actually observed and so does 4 
not corroborate any testimony regarding the addition of lactase. (See Declaration of 5 
John Dunker, Exh. 1038, ¶ 6.) Furthermore, on cross-examination, Mr. Gomez admitted 6 
that the resulting milk product was not lactose-free. (See Valio Opp. 5, Paper 291, at 7 
36:10-21, citing Gomez Deposition, Exh. 2081, at 32:8-33:7; FF 39.) 8 
Conclusion 9 
SMP has failed to direct us to sufficient evidence that any of the named inventors 10 
conceived of the entire subject matter of the Count by 20 July 1998 or even by 11 
December 2001. Because SMP has failed to meet its burden of showing that it 12 
conceived of the subject matter of the Count before Valio’s accorded earliest priority 13 
date of 14 May 2002, SMP has failed to show that it is entitled to priority of the invention 14 
under 35 U.S.C. § 102(g). We need not consider SMP’s evidence of diligence or render 15 
a decision on Valio Motion 6 for priority. See Genise v. Desautels, 73 USPQ2d 1393, 16 
1395 (BPAI 2004) (unpublished) (“The burden is initially on [the] junior party . . . to 17 
prove a date of invention prior to the senior party's filing date. If the junior party is 18 
unsuccessful in that endeavor, it becomes unnecessary to consider the senior party's 19 
priority proofs.”) 20 
Judgment will be entered against SMP separately. 21 

21 

cc (electronic mail): 1 
2 
Counsel for Valio: 3 
4 
Bruce J. Boggs, Jr., Esq. 5 
Adda C. Gogoris, Esq. 6 
MERCHANT & GOULD P.C. 7 
Email: jboggs@merchantgould.com  8 
Email: adda@merchantgould.com  9 
10 
11 
Counsel for Select Milk Producers: 12 
13 
Cameron K. Weiffenbach, Esq. 14 
James T. Carmichael, Esq. 15 
MILES & STOCKBRIDGE, P.C. 16 
Email: cweiffenbach@milesstockbridge.com  17 
Email: jcarmich@milesstockbridge.com  18 
19 
Lekha Gopalakrishnan, Esq. 20 
WINSTEAD PC 21 
Email: lgopalakrishnan@winstead.com  22 
23