a preponderance of the evidence. 37 CFR § 1.657(b). This ultimate burden of proof always
remains with thejunior party in the interference. Brown v. Barbacid, 276 F.3d 1327, 1333,
61 USPQ2d 1236,1239 (Fed. Cir. 2002).
Conception is the formation in the mind of the inventor of a definite and permanent idea
of the complete and operative invention, as it is later applied in practice. Cooper v. Goldfarb,
154 F.3d 1321, 1327, 47 USPQ2d 1896, 1901 (Fed. Cir. 1998). "An idea is definite and
permanent when the inventor has a specific, settled idea, a particular solution to the problem at
hand, notjust a general goal or research plan he hopes to pursue." Burroughs Wellcome Co. V.
Barr Lab., Inc., 40 F.3d 1223, 1228, 32 USPQ2d 1915, 1919 (Fed. Cit. 1994).
A reduction to practice may be either a constructive reduction to practice, which occurs
when a patent application is filed, or an actual reduction to practice. Cooper v. Goldfarb,
154 F.3d at 1327, 47 USPQ2d at 1901. In order to establish an actual reduction to practice, the
inventor must prove that: (1) he constructed an embodiment or performed a process that met all
the limitations of the interference count, and (2) he determined that the invention would work
for its intended purpose.
Furman relies heavily upon the testimony of Dr. Furman in support of its arguments. In
evaluating the credibility of Dr. Furman's testimony, we consider whether that testimony is
corroborated. An inventor's testimony used to establish conception or reduction to practice must
be corroborated by independent evidence. All pertinent evidence must be evaluated when
determining the credibility of an inventor's testimony. For example, under a "rule of reason"
analysis, circumstantial evidence of an independent nature may satisfy the corroboration
requirement. Reese v. Hurst v. Wiewiorowski, 661 F.2d 1222, 1230, 211 USPQ 936, 940
22
Page: Previous 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 Next
Last modified: November 3, 2007