Interference No. 103,203
tissue factor. Thus, in our view, this case turns on a determination of which party was the
first to be in possession of the complete and correct sequence encoding amino acid
residues 1 to 263 of the mature human tissue factor protein set forth in Figure 1 of the
Edgington patent. Cf. Fiers v. Revel, 984 F.2d at 1171-72, 25 USPQ2d at 1607 (Fed. Cir.
1993).
Actual reduction to practice must be proven by corroborating facts and
circumstances independent of information received from the inventor. Coleman v. Dines,
754 F.2d 353, 359, 224 USPQ 857, 862 (Fed. Cir. 1985); Reese v. Hurst, 661 F.2d
1222, 1225, 211 USPQ 936, 940 (CCPA 1981). That is, performance of the work may be
done by another on behalf of the inventors; however, if done by the inventor, the inventor’s
activities must be corroborated. Holmwood v. Sugavanam,
948 F.2d 1236, 1239, 20 USPQ2d 1712, 1715 (Fed. Cir. 1991). This does mean that an
actual “over the shoulder” observation of the inventor’s work is necessary. Cooper v.
Goldfarb, 154 F.3d 1321, 1330, 47 USPQ2d 1896, 1903 (Fed. Cir. 1998). Rather, a “rule
of reason” applies to determine whether the inventor’s testimony has been
sufficiently corroborated. Price v. Symsek, 988 F.2d 1187, 1192, 26 USPQ2d 1031,
1036-37 (Fed. Cir. 1993). The purpose of the rule requiring corroboration is to prevent
fraud. Berry v. Webb, 412 F.2d 261, 267, 162 USPQ 170, 174 (CCPA 1969). Whether
an actual reduction to practice has been corroborated must be decided on the facts of
each case. Berges v. Gottstein, 618 F.2d 771, 776, 205 USPQ 691, 695 (CCPA 1980).
Opinion on Priority
28
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