Interference No. 104,522 Paper108
Nichols v. Tabakoff Page 10
practice (Paper 74).
Ill. Priority
"Priority goes to the first party to reduce an invention to practice unless the other
party can show that it was the first to conceive the invention and that it exercised
reasonable diligence in later reducing the invention to practice." Price v. Symsek, 988
F.2d 1187, 1190, 26 USPQ2d 1031, 1033, (Fed. Cir. 1993).
"A rebuttable presumption shall exist that, as to each count, the inventors made
their invention in the chronological order of their effective filing dates. The burden of
proof shall be upon a party who contends otherwise." 37 CFR § 1.657(a). Thus, in an
interference involving "a patent and an application having an effective filing date on or
before the date of patent issued, a junior party shall have the burden of establishing
priority by a preponderance of the evidence." 37 CFR § 1,657(b).
Nichols argues that it "conceived of the invention corresponding to the
interference count and reduced the invention to practice prior to the constructive filing
date of the Senior Party"(NB, p. 41, T 2).' Nichols does not argue that it was the first to
conceive and the last to reduce the invention to practice or assert diligence from before
Tabakoff s effective filing date to an actual or constructive reduction to practice. Nichols
further argues that Tabakoff derived the subject matter of the interference from Nichols.
3 Herein, "NR" refers to Nichols Record, "NB" to Nichols Principal Brief (Paper 84),'70" to
Tabakoff Opposition to Nichols Principal Brief (Paper 90), and "NRB" to Nichols Reply Brief to Tabakoff
Opposition to Nichols Principal Brief (Paper 94). Similarly, "TR" refers to Tabakoff Record, "TB" to
Tabakoff Principal Brief (Paper 88), "NO" to Nichols Opposition to Tabakoff Principal Brief (Paper 96) and
"TRB" to Tabakoff Reply Brief to Nichols Opposition to Tabakoff Principal Brief (Paper 97).
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