IV. Decision on Priority
Priority in an interference is awarded to the party establishing either (1) the earlier date of
reduction to practice, or (2) the earlier date of conception, but a later date of reduction to
practice, coupled with a reasonable diligence to reduce the invention to practice from before the
other party=s date of conception until its reduction to practice is achieved. Mahurkar v. C. R.
Bard, Inc., 79 F.3d 1572, 1577, 38 USPQ2d 1288, 1290 (Fed. Cir. 1996).
A party that is both first to conceive of the subject matter of the count and first to reduce
it to practice is deemed the Afirst to invent.@ Eaton v. Evans, 204 F.3d 1094, 1097, 53 USPQ2d
1696, 1698 (Fed. Cir. 2000); Hyatt v. Boone, 146 F.3d 1348, 1351, 47 USPQ2d 1128, 1129 (Fed.
Cir. 1998). Reduction to practice may be Aconstructive reduction to practice@ or an actual
reduction to practice. A constructive reduction to practice occurs when the inventor files a
patent application describing the invention, teaching how to make and use the invention, and
explaining the best mode of practicing the invention, i.e., meets the requirements of '112, first
paragraph. Feldman v. Aunstrup, 517 F.2d 1351, 186 USPQ 108 (CCPA 1975). An actual
reduction to practice is a question of law which is resolved on the basis of underlying facts.
Estee Lauder, Inc. v. L'Oreal, S.A., 129 F.3d 588, 592, 44 USPQ2d 1610, 1613 (Fed. Cir. 1997).
Specifically, in an interference proceeding, a party seeking to establish an actual reduction to
practice must satisfy a two-prong test: (1) the party constructed an embodiment that met every
requirement of the interference count, and (2) the embodiment operated for its intended purpose.
With regard to the first prong, precedent requires that the constructed embodiment include the
precise requirements
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