Interference No. 104,101
Page 21
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. Eaton, 204 F.3d at 1097, 53 USPQ2d at 1698. As to the
second prong, there must there be some recognition of successful testing prior to the critical date
for an invention to be reduced to practice. Thus, “a reduction to practice does not occur until an
inventor, or perhaps his agent, knows that the invention will work for its intended purpose.”
Estee Lauder, Inc., 129 F.3d at 593, 44 USPQ2d at 1614.
A rebuttable presumption exists that, as to each count, the inventors made their invention
in the chronological order of their effective filing dates. The burden of proof shall be upon a
party who contends otherwise. 37 CFR § 1.657(a).
In an interference between two copending applications, such as this, the junior party has
the burden of proof to establish priority and that burden 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). This ultimate burden of
proof always remains with the junior party in the interference. Brown v. Barbacid, 276 F.3d
1327, 1333, 61 USPQ2d 1236, 1239 (Fed. Cir. 2002).
Cameron is the senior party based upon its accorded priority date of October 12, 1993.
Lilly is the junior party based upon its accorded priority date of September 20, 1994. As junior
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