Interference No. 105,125
Chaffee v. Skulnick
The proof standards applicable to Rule 617 "summary judgment" proceedings are
discussed in Basmadiian v. Landry, 54 USPQ2d 1617 (Bd. Pat. App. & hat. 1997). In attempting
to meet a party's own burden of proof, it is the responsibility of that party to precisely identify
and clearly explain the evidence on which it relies. Dana CoER. v. American Axle & Mfg.,
279 F-3d 1372, 1377, 61 USPQ2d 1609, 1612 (Fed. Cir. 2002); Biotee Biologische
Naturven2ackunizen v. Bioco1p., Inc., 249 F.3d 1341, 1353, 58 USPQ2d 1737, 1746 (Fed. Cir.
200 1) (refusing to impose duty on fact-finder to search record for possible evidence).
Priorit
Priority of invention belongs 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); CoWer v. Goldfarb, 154 F.3d 1321, 1327, 47
USPQ2d 1896, 1900-01 (Fed. Cir. 1998). Junior party Thomas J. Chaffee asserts that it had
actually reduced the claimed invention to practice prior to the senior party's filing date, February
27, 2001, and does not rely on any assertion of reasonable diligence from conception to reduction
to practice.
To establish an actual reduction to practice, it must be established that (1) the party
constructed an embodiment that met every element of the count and (2) the embodiment worked
for its intended purpose. Eaton v. Evans, 204 F.3d at 1097, 53 USPQ2d at 1698. There can be
no actual reduction to practice if the constructed embodiment lacks an element recited in the
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