Interference 103,685
21 or 25 or 29 or 30 or 34 or 35 of Holsten’s patent. To
establish priority of invention with respect to Count 2 of this
interference, Riggins needs only to establish that it reduced to
practice an embodiment encompassed by any one of the claims to
which Count 2 is alternatively drawn.
“In order to establish an actual reduction to practice, the
inventor must prove that: (1) he constructed an embodiment or
performed a process that met all the limitations of the
interference count; and (2) he determined that the invention
would work for its intended purpose.” Cooper v. Goldfarb,
154 F.3d 1321, 1327, 47 USPQ2d 1896, 1901 (Fed. Cir. 1998).
We emphasize the word “count.” The inventor must prove that
it constructed an embodiment meeting all the limitations of
the interference “count.” “In addition, the inventor must
contemporaneously appreciate that the embodiment worked and
that it met all the limitations of the interference count.”
Cooper v. Goldfarb, 154 F.3d at 1327, 47 USPQ2d at 1901
(emphasis added). In this interference, the “count” (Count 2)
is alternatively directed to the invention defined by any one
of the designated claims of Riggins’ involved application or
the invention defined by any one of the designated claims of
Holsten’s involved application or Holsten’s patent. Thus, to
establish an actual reduction to practice in this interference,
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