SOLOMON V. BHAGAVATULA - Page 15




                                 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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