GRAY et al v. ALTON et al - Page 11




                       III.    Discussion                                                                                           
                       A rebuttable presumption exists that the inventors made their invention in the                               
               chronological order of their effective filing dates.  The burden of proof shall be upon the party                    
               that contends otherwise. 37 CFR § 1.657(a). Alton argues that it conceived the invention prior                       
               to its accorded benefit date (Paper 1 at 3). Thus, Alton has the burden of proof.                                    
                       Conception is the formation in the inventor’s mind of a definite and permanent idea of                       
               the complete and operative invention as it is thereafter to be 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, not just 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. Cir. 1994). The conception                           
               must show possession of every limitation of the count and must be sufficient to enable one of                        
               ordinary skill in the art to make the invention without extensive experimentation.  Sewall v.                        
               Walters, 21 F.3d 411, 415, 30 USPQ2d 1356, 1359 (Fed. Cir. 1994).                                                    
                       An inventor’s testimony used to establish conception must be corroborated by                                 
               independent evidence. Burroughs Wellcome Co. v. Barr Lab., Inc., 40 F.3d at 1228, 32 USPQ2d                          
               at 1919. 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 (CCPA 1981); Cooper v. Goldfarb,                               
               154 F.3d at 1330, 47 USPQ2d at 1903. “However, the ‘rule of reason’ does not dispense with                           



                                                                11
                                                                 





Page:  Previous  3  4  5  6  7  8  9  10  11  12  13  14  15  16  17  Next 

Last modified: November 3, 2007