recited in the count. Thus, for purposes of an interference, there can be no actual reduction to
practice if the constructed embodiment lacks an element recited in the count or uses an
equivalent of that element. Eaton, 204 F.3d at 1097, 53 USPQ2d at 1698.
In an interference between a patent and an application having a filing date on or before
the issue date of the patent, the burden of proof to establish priority is by a preponderance of the
evidence. 37 CFR ' 1.657(b). The burden of showing something by a preponderance of the
evidence simply requires the trier of fact to believe that the existence of a fact is more probable
than its nonexistence before the trier of fact may find in favor of the party who carries the
burden. Concrete Pipe & Products of California, Inc. v. Construction Laborers Pension Trust
for Southern California, 508 U.S. 602, 622, 113 S. Ct. 2264, 2279 (1993).
Both Gambaro and Goddard allege an actual reduction to practice prior to their effective
filing dates for the subject matter of Count 1. Gambaro >322 has an effective filing date of
January 11, 1993 and Goddard >949 has an effective filing date of February 22, 1993. (Paper No.
1 and 2, Notice Declaring Interference). Accordingly, for purposes of priority, Goddard has the
initial burden of establishing an actual reduction to practice date prior to the Gambaro >322 filing
date of January 11, 1993.
A. Goddard=s Alleged Reductions to Practice
As set forth in Goddard=s Brief (Paper No. 226), Goddard=s invention relates to Ahand-
held devices designed for the efficient entry of information into electronic systems using a
keyboard having a housing with a grippable portion to allow the device to be held in one hand
with the thumb free to move to various predetermined key-actuation positions while the device is
held.@ (Goddard=s Brief, p. 1, emphasis added). The brief alleges that Goddard reduced the
invention of Count 1 to practice by Aactually making structure which embodied each and every
structural limitation of the count by at least as early as March 10, 1989.@ (Goddard=s Brief, p.
13). More specifically, Goddard allegedly constructed eight prototype controllers, which are
referred to as Models A1, 1, 2, 3, 4, 5, 6 & 7. The controller models and their dates of
construction are described below.
1. Goddard Controller Model A1
According to Goddard’s Brief, on December 17, 1988, Goddard conceived and began
work on a pistol-like controller that would be easy to point and use, with controls operated by
thumb and fingers. (Goddard=s Brief, pages 4-5; Goddard Declaration, & 4; Champion
Declaration, & 5). This work continued into January 1989, when on January 11, 1989, Goddard
is said to have constructed pistol-like television controller device AModel A1.@ (Goddard=s Brief,
page 5; Goddard Declaration, & 8; Champion Declaration, & 4). Photographs of Model A1,
taken on January 11, 1989, were provided as Goddard Exhibits J12 and J2. Exhibit J1, according
to the brief, is a photograph of a Mr. William M. Champion, Jr., Aholding the controller device
in his right hand with his fingers gripping it and his right thumb hidden by the device, positioned
2Junior party Goddard=s exhibits begin with the letter AJ.@ Senior party Gambaro=s
exhibits begin with the letter AS.@
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