Interference No. 104,021 Paper No. 112
Griffin v. Bertina Page 3
The count requires an appreciation of the significance of a mutation at codon 506 within
exon 10 of the human Factor V gene to the diagnosis of an increased risk of thrombosis due to a
genetic defect.
Priority cases
Junior party Griffin filed a principal brief on priority (Paper No. 94), a reply brief (Paper
No. 99), and supporting exhibits. Bertina filed an opposition brief (Paper No. 97) and supporting
exhibits, but elected to rely on its accorded benefit date rather than put on a separate priority case
(Paper No. 96).3
Counsel for each party appeared for oral argument and ably presented the views of his
client.
DISCUSSION
The only issue presented for decision is whether junior party Griffin successfully reduced
to practice the invention of the count before senior party Bertina's earliest accorded benefit date
(Paper No. 94 at 4; Paper No. 97 at 4 & 5). Reduction to practice requires the production and
recognition of an embodiment meeting all limitations of the count and the recognition of a
specific practical utility for the invention. Estee Lauder Inc. v. L'Oreal, S.A., 129 F.3d 588, 593,
44 USPQ2d 1610, 1614 (Fed. Cir. 1997). Recognition of the invention in the count cannot be
established retroactively: it must be contemporaneous with the alleged priority date. E.g., Estee
3 The Griffin record is paginated as "Gxxx", where "xxx" is a three-digit number. Griffin exhibits are
numbered starting with "1001". The Bertina record is paginated "Bxxxx", where "xxxx" is a four-digit number. Bertina
exhibits are numbered starting with "2001".
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