Interference No. 104,101
Page 20
F49. Mr. Magee’s declaration testimony (EX 1156) does not specifically identify the structure
of compound 311583. Moreover, Mr. Magee fails to specifically indicate that he was aware of
the structural identity of compound 311583. Similarly, even if Mr. Magee was aware of the
actual structure of the tested compound, Mr. Magee does not state the basis for such knowledge.
III. Opinion
Priority in an interference is awarded to the party establishing either (1) an earlier date of
reduction to practice, or (2) an earlier date of conception, but a later date of reduction to practice,
coupled with a reasonable diligence to a reduction to practice from (a) a time prior to the
opponent’s conception until (b) the party’s reduction to practice is achieved. Eaton v. Evans, 204
F.3d 1094, 1097, 53 USPQ2d 1696, 1698 (Fed. Cir. 2000); 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 first to invent. Eaton v. Evans, 204 F.3d at 1097, 53 USPQ2d at
1698; Hyatt v. Boone, 146 F.3d 1348, 1351, 47 USPQ2d 1128, 1129 (Fed. Cir. 1998). A
reduction to practice may be a “constructive reduction to practice” or an actual reduction to
practice.
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
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