Interference 102,728
B. Conception
Conception is the touchstone of inventorship, the completion of the mental part
of invention. Sewall v. Walters, 21 F.3d 411, 415, 30 USPQ2d 1356, 1358-59 (Fed. Cir.
1994). It is the “formation in the mind of the inventor, of a definite and permanent idea
of the complete and operative invention, as it is thereafter to be applied in practice.”
Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d at 1376, 231 USPQ at 87;
Coleman v. Dines, 754 F.2d 353, 359, 224 USPQ 857, 862 (Fed. Cir. 1985). Because
it is a mental act, our appellate reviewing court has required corroborating evidence of a
contemporaneous disclosure that would enable one skilled in the art to make the
invention.” Kridl v. McCormick, 105 F.3d 1446, 1449, 41 USPQ2d 1686, 1689 (Fed.
Cir. 1997); Burroughs Wellcome Co. v. Barr Laboratories, Inc., 40 F.3d 1223, 1227-28,
32 USPQ2d 1915, 1919; Coleman v. Dines, 745 F.2d at 359, 224 USPQ at 862.
Moreover, with respect to corroboration of conception, the Court said in Price v.
Symsek, 988 F.2d 1187, 1189, 26 USPQ2d 1031, 1036 (Fed. Cir. 1993) that
“throughout the history of the determination of patent rights, oral testimony by an
alleged inventor asserting priority over a patentee’s rights is regarded with skepticism,
see Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45, 60 (1923);
Deering v. Winona Harvester Works, 155 U.S. 286, 300-01 (1894); Barbed Wire Patent,
143 U.S. 275, 285 (1892), and as a result, such inventor testimony must be supported
by some type of corroborating evidence.” In Price v. Symsek, 988 F.2d at 1189, 26
USPQ2d at 1036, the Court further stated:
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