Interference No. 103,169
Derivation
On this record, we find that Chenevey et al. have failed to meet their burden of proof
on the derivation issue.
In order to establish derivation, Chenevey et al. must establish conception of the
invention and then communication of the conception of the invention to Baars et al. prior to
conception by Baars et al. In re Whittle, 454 F.2d 1193, 1196, 172 USPQ 535, 537
(CCPA 1972); Davis v. Reddy, 620 F.2d 885, 888, 205 USPQ 1065, 1069 (CCPA 1980);
Shumaker v. Paulson, 136 F.2d 700, 703, 58 USPQ 279, 282 (CCPA 1943).
Conception is a question of law. Kridl v. McCormick, 105 F.3d 1446, 1449, 41
USPQ2d 1686, 1688-1689 (Fed. Cir. 1997); Bosies v. Benedict, 27 F.3d at 542, 30
USPQ2d at 1864; Fiers v. Revel, 984 F.2d 1164, 1168-1169, 25 USPQ2d 1601, 1604
(Fed. Cir. 1993). Conception is defined as the formation ?in the mind of the inventor of a
definite and permanent idea of the complete and operative invention, as it is hereafter to
be applied in practice.” Hybritech , Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367,
1376, 231 USPQ 81, 87-88 (Fed. Cir. 1986), cert. denied, 480 U.S. 947 (1987) (citing
Robinson on Patents 532 (1890) and Coleman v. Dines, 754 F.2d 353, 359, 224 USPQ
857, 862 (Fed. Cir. 1985)). By this definition, conception consists of two parts, the idea
and the means to carry out the idea. Conception must include every feature or limitation in
the count, and every limitation must have been known to the inventor at the time of the
alleged conception. Coleman, 754 F.2d at 359, 224 USPQ at 862.
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