Interference Nos. 103,882, 103,933, and 104,228 Consolidated Judgment
Gregory v. Tsui et al. Page 17
be read apart from its facts.18 The facts of Bigham and Hyatt do not support Tsui's proposition
that best-mode compliance is required in a constructive reduction to practice.
Since precedent does not squarely address the question, the next step is to determine
whether it makes sense for best-mode compliance to be a requirement for a constructive
reduction to practice. As the first section of this discussion notes, benefit for the purpose of
priority is different from benefit for the purpose of patentability. A constructive reduction to
practice by filing is essentially an anticipating reference under § 102(g) against the subject matter
of the count. Other anticipating references need not disclose a best mode. It is not clear from
Tsui's motion why a best-mode requirement should be engrafted onto constructive reductions to
practice. The best-mode requirement creates a statutory bargain by which a patentee obtains the
right to exclude others from practicing the claimed invention for a limited period in exchange for
giving the public knowledge of the preferred embodiments for practicing the invention. Eli Lilly
& Co. v. Barr Labs., Inc., 251 F.3d 955, 962, 58 USPQ2d 1869, 1874 (Fed. Cir. 2001). Thus,
fundamentally, the best-mode inquiry is directed to whether the applicant (Gregory) is entitled to
its claimed subject matter. By contrast, an interference benefit determination is fundamentally
about whether the other party (Tsui) is anticipated under § 102(g)(1). There is nothing
inconsistent in a determination that Gregory was the first to invent the subject matter of the count
(thus defeating Tsui's claim) but has forfeited its entitlement to a particular claim because of a
best-mode violation.
18 The court in Hyatt faced a similar problem where the precedent used inconsistent (and seemingly divergent)
tests for written description. The court declined to find a divergence and instead looked to the underlying policy of the
statute to reconcile the apparent divergence. 146 F.3d at 1354, 47 USPQ2d at 1132.
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