keeping good records of the dates when cases are docketed as well as the dates when specific work
is done on the applications.” Kollonitsch, 806 F.2d at 1028, 231 USPQ at 970.
Bowman also testifies that during the same time period he worked on an application (Case
No. 33120) directed to an invention “closely related” to the involved invention. GR 27, ¶ 54. Case
No. 33120 was apparently assigned to the boroxine invention and ultimately became the 061 patent.
GR 27, ¶ 54. Work on a related case may be credited toward reasonable diligence if the work on the
related case "contribute[s] substantially to the ultimate preparation of the involved application."
Kollonitsch, 806 F.2d at 1029, 231 USPQ at 970. Geerts has not explained how the work on the
33120 application contributed substantially to the preparation of Geerts’ involved application.
Bowman merely states the conclusion that the cases are closely related and that much of the work
from 33120 carried over to the preparation of 33136. GR 27, ¶ 54. What that work was has not been
identified.
Geerts has failed to prove the dates when activity specific to the Geerts involved application
occurred. Geerts has failed to show attorney diligence from a time prior to the filing of Sugano’s
Japanese application on December 8, 1992, to the filing of Application 08/092,143 on July 14, 1993.
FINAL JUDGMENT
It is
ORDERED that judgment on priority as to the subject matter of Count 1 (Paper 42, p.4), is
awarded against the junior party, ROLF L. GEERTS and TARA G. HILL;
FURTHER ORDERED that junior party, ROLF L. GEERTS and TARA G. HILL, is not
entitled to a patent containing Claims 1-9, 14, 19-27, 30-32 (corresponding to Count 1) of U.S.
Patent 5,414,180;
FURTHER ORDERED that if there is a settlement agreement that the parties are advised of
the requirement to file a copy of the agreement (35 U.S.C. § 135(c)); and
FURTHER ORDERED that a copy of this judgment is made of record in Application
08/887,265 and in the file history of Patent 5,414,180.
)
RICHARD E. SCHAFER )
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