Interference No. 102,922
Interference No. 103,088
Derivation addresses originality determining who invented the
subject matter. While priority focuses on which party first
invented the subject matter of the count. Bosies v. Benedict,
27 F.3d 539, 542-543, 30 USPQ2d 1862, 1865 (Fed. Cir. 1994).
Derivation is a question of fact. Price v. Symsek, 988 F.2d
1187, 1190, 26 USPQ2d 1031, 1033 (Fed. Cir. 1993). To prove
derivation, a party must show (1) prior conception of the
subject matter of the count; and (2) communication of the
conception to the opponent Id., 988 F.2d at 1190, 26 USPQ2d at
1033; Hedgewick v. Akers, 497 F.2d 905, 908, 182 USPQ 167, 169
(CCPA 1974). Communication is sufficient if the one who
thought up the invention communicates it to another who is to
try it out.
Applegate v. Scherer, 332 F.2d 571, 573-74, 141 USPQ 796, 799
(CCPA 1964) Further, the party must show that the communicated
subject matter would have been sufficient to enable one of
ordinary skill in the art to construct and successfully
operate the subject matter of the count. Mead v. McKirnan,
585 F.2d 504, 507, 199 USPQ 513, 515 (CCPA 1978).
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