Interference 103,685
the count constitutes a reduction to practice of the invention
defined by the count for purposes of priority was most recently
reaffirmed in Cooper v. Goldfarb, 240 F.3d at 1384, 57 USPQ2d
at 1994 (emphasis added):
[I]n order to establish reduction to practice, the
inventor must prove that he made an embodiment of
his invention that met all of the limitations of the
interference count and that he determined that the
interference would work for its intended purpose.
Cooper . . .[v. Goldfarb], 154 F.3d at 1327, 47 USPQ2d
at 1901. The inventor also must prove that he
“contemporaneously appreciate[d] that the embodiment
worked and that it met all the limitations of the
interference count.” Id. What that means in terms
of this case is that Cooper must establish that he
made ePTFE material having fibril lengths within the
scope of the interference count, that he determined
that the material would be useful as a vascular graft,
and that he knew, at the time of his alleged reduction
to practice, both that the material had the properties
recited in the count and that it would be useful as a
graft.
Similarly, it is evident that a first party to an
interference may establish an actual reduction to practice of the
invention of the interference count by proving that it made a
product or performed a process defined solely by the claims of
the other party to the interference corresponding to the count.
See Cooper v. Goldfarb, 240 F.3d at 1385, 57 USPQ2d at 1995
(emphasis added):
Cooper also argues that he himself knew the fibril
lengths of the material sent to Goldfarb. If that were
true, then he could establish reduction to practice even
though Goldfarb’s determination of the fibril lengths
does not inure to his benefit.
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