Interference No. 104,101
Page 2
I. Summary of the Decision
In its broadest sense, this interference is directed to a compound. Lilly, as junior party,
has attempted to prove an earlier actual reduction to practice of the compound of the count. A
party seeking to establish an actual reduction to practice must satisfy a two-prong test: (1) the
party constructed an embodiment that met every requirement of the interference count, and (2)
the embodiment operated for its intended purpose. Eaton v. Evans, 204 F.3d 1094, 1097, 53
USPQ2d 1696, 1698 (Fed. Cir. 2000). As the count is directed to a compound without a stated
utility, a substantial utility for any purpose is sufficient to show that the compound operated for
its intended purpose. Campbell v. Wettstein, 476 F.2d 642, 649, 177 USPQ 376, 381 (CCPA
1973).
Lilly has submitted numerous alleged compounds that are said to fall within the scope of
the count. Yet, Lilly has identified only one particular compound (LY 311583) as having a
recognized substantial utility. As to compound LY 311583, Lilly has failed to sufficiently
demonstrate that they constructed a compound having the LY 311583 structure.
Lilly, as junior party, has failed to meet its burden of proof. Priority of invention for
Count 2, the sole count in interference, is awarded against junior party Lilly.
II. Findings of Fact
A. Previous Findings
1. Real Parties in Interest
F1. Lilly is the real party in interest in Lilly ‘434 which was filed on July 31, 1995. Pfizer is
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