Chicago, IL
PM
15 Nov
1993
Assuming that the sealed envelope and the document it contains demonstrates a corroborated
conception of the invention by November 15, 1993, Solomon must prove reasonable diligence to a
reduction to practice. 35 U.S.C. § 102(g). Insufficient evidence has been produced to prove the activities
undertaken towards a constructive reduction to practice by filing the application. Solomon asserts that a
disclosure document was given to his attorney on November 8, 1993. However, as we indicated above,
the existence and date of the document was not corroborated. The record before us also does not explain
the activities that were taken from a time prior to, December 8, 1993, (Bhagavatula’s effective filing date)
to Solomon’s filing on December 23, 1993. While this time period is relatively short, a short time period
does not excuse the necessity of some proof of diligence during the period. In re Mulder, 716 F.2d 1542,
1545, 219 USPQ 189, 193 (Fed. Cir. 1983) (Diligence required to be shown even though the gap was
only two days). We will not speculate on possible steps that may have been taken. Solomon, as the junior
party, has the burden of proving diligence.
Because diligence has not been proved, we do not need to and have not opened the envelope and
considered the content of any document contained in it.
D. Bhagavatula’s Priority
Since we have held that Solomon has not proved a date of invention prior to Bhagavatula’s
effective filing date, we have not considered Bhagavatula’s evidence on priority.
E. Judgment
For the reasons stated above it is
ORDERED that judgment on priority as to Count 1 (Paper 1, p. 31), the sole count in the
interference, is awarded against the junior party WILLIAM SOLOMON.
FURTHER ORDERED that, judgment on priority as to Count 1 is awarded in favor of senior
party SATYASI BHAGAVATULA.
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