Priority of invention 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 that invention to
practice. Cooper v. Goldfarb, 154 F.3d 1321, 1327, 47 USPQ2d
1896, 1901 (Fed. Cir. 1998). According to Winter's preliminary
statement, Winter completed a model of the snow board key chain
on or about 1 November 1996. We take 1 November 1996 as the date
on which Winter states that he actually reduced the invention to
practice (See 37 CFR § 1.623(a)(5)). Since it is Winter's
position that he actually reduced to practice the invention prior
to the '498 filing date of 13 February 1997 (FF 19), diligence
does not appear to be an issue in the interference. In its brief
for final hearing2, Winter does not argue diligence.
A reduction to practice may be a constructive reduction to
practice, which occurs when a patent application is filed.
Cooper v. Goldfarb, 154 F.3d at 1327, 47 USPQ2d at 1901.
Bergfalk constructively reduced its invention to practice on
13 February 1997, the date it filed its '498 application.
Accordingly, Winter must at least show that it actually reduced
to practice an embodiment within the scope of the count prior to
13 February 1997.
In order to establish an actual reduction to practice, the
inventor must prove, inter alia, that the inventor constructed an
embodiment that met all the limitations of the interference
2 This is the same as the principal brief.
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