Interference 102,728
IX. Opinion on Diligence
It is well established that priority of invention goes to the first to reduce the
invention of the count to practice unless the other party can show that it was the first to
conceive of the invention and that it exercised reasonable diligence in later reducing the
invention to practice. Cooper v. Goldfarb, 154 F.3d 1321, 1326, 47 USPQ2d 1896,
1901 (Fed. Cir. 1998); Revise and Caesar, Interference Law and Practice, § 173,
pp. 537-38. Reasonably continuous activity must be shown from a time prior to the
opponent’s entry into the field, which in this case would be a date prior to Brake’s
January 12, 1983 filing date, to a reduction to practice, either constructive or actual, of
the invention of the count. The testimony and self-serving documentation of the
inventor are not sufficient to establish diligence. The acts relied upon to establish
diligence must be corroborated. Rieser v. Williams, 255 F.2d 419, 424 118 USPQ 96,
101 (CCPA 1958); Kendall v. Searles, 173 F.2d 986, 992, 81 USPQ 363, 368 (CCPA
1949).
showing of reasonable diligence is necessary.
In our view, the Order is not inconsistent with the prevailing case law with respect
to a showing of reasonable diligence. In fact, the Order is silent with respect to the
legal requirements for diligence. Moreover, we direct attention to Singh’s original brief,
Paper No. 151, Appendix 1, wherein a calendar is provided which is filled in with
asterisks which purportedly represent Dr. Singh’s day-to-day activities. The Order
simply requested that Singh explain the work performed on the alleged dates. When
provided with that information the Board would then be in a position to determine
whether Singh had exercised reasonable diligence in reducing the invention of the
count to practice.
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