Depending on the priority proofs, it is therefore possible that we will not need to
decide if count I and Belleau proposed count 2 or proposed count 3 define
separately patentable inventions. On the other hand, if one party prevails on
priority with respect to count I and the opponent prevails on priority with respec0
to Belleau proposed count 2 or proposed count 3, then we will need to decide if
count I and Belleau proposed count 2 or proposed count 3 define separately
patentable inventions.
On the record before us, Furman has not sufficiently shown that it was prior to Belleau as
to the invention defined by either count 1, count 2 or count 3. Accordingly, we need not and do
not decide whether count 2 or count 3 define an invention that is separately patentable from the
generic invention defined by count 1. For purposes of awarding judgment, we shall award
judgment against Furman as to count 1, count 2, and count 3 even though we have not decided
whether the invention defined by either of count 2 or count 3 is separately patentable from the
invention defined by count 1.
C. Priority
Priority in an interference is awarded to the first party to reduce the invention to practice
unless the other party can establish that it was the first to conceive the invention and that it
exercised reasonable diligence in later reducing the invention to practice. Eaton v. Evans,
204 F.3d 1094,1097, 53 USPQ2d 1696, 1698 (Fed. Cir. 2000).
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. 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
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