Patent Interference No. 103,892 Page 11
field toward a reduction to practice, either actual or constructive. Davie must establish
that it actually reduced the invention to practice prior to June 26, 1986 (see supra,
Haskell v. Colebourne, 671 F.2d 1362, 1365, 213 USPQ 192, 194 (CPA 1982)).
Has Davie Shown That It Actually Reduced the Invention to Practice before June 26,
1986?
Davie has also not shown that it actually reduced the invention of the count to
practice before June 26, 1986. Davie has not shown that it actually prepared the
invention before June 26, 1986.
“[R]eduction to practice requires a showing of three elements: (i) production of a
composition of matter satisfying the limitations of the count, (ii) recognition of the
composition of matter, and (iii) recognition of a specific practical utility for the
composition,” Estee Lauder v. L’Oreal S.A., 129 F.3d 588, 592, 44 USPQ2d 1610, 1613
(Fed. Cir. 1997), citing Standard Oil Co. (Indiana) v. Montedison, S.p.A., 494 F. Supp.
370, 206 U.S.P.Q. 676, 689 (D. Del. 1980), aff’d, 664 F.2d 356, 212 U.S.P.Q. (BNA)
327 (3rd Cir. 1981)[, cert. denied, 456 U.S. 915 (1982)]; and,
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
or performed a process that met every element of the interference count, and (2)
the embodiment or process operated for its intended purpose.
Eaton v. Evans, 204 F.3d 1094, 1097, 53 USPQ2d 1696, 1698 (Fed. Cir. 2000).
The first part of the test requires a showing of both an actual preparation and a
recognition of the embodiment of the count. Regarding the actual preparation, it must be
Page: Previous 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 Next
Last modified: November 3, 2007