Interference No. 103,635
755, 760, 28 USPQ 379, 383-84 (CCPA 1936). Furthermore, the activities constituting
diligence must be the result of efforts made on behalf of the inventor (Fearon v. Krasnow,
172 F.2d 233, 80 USPQ 435 (CCPA 1949)) and any testimony by Scott of such activities
must be corroborated, Rieser v. Williams, 255 F.2d 419, 424, 118 USPQ 96, 101 (CCPA
1958). "It is well settled that, to satisfy the 'reasonable diligence' requirement of 35 U.S.C.
§ 102(g), the work relied on must ordinarily be directly related to reduction to practice of the
invention of the counts in issue." Naber v. Cricchi, 567 F.2d 382, 384, 196 USPQ 294,
296 (CCPA 1977), cert. denied, 439 U.S. 826 (1978). However, activities directed solely
to commercial exploitation of the invention not yet reduced to practice do not by themselves
constitute diligence. Seeberger v. Dodge, 1905 Dec. Comm’r Pats. 603 (1905)10.
To show reasonable diligence, Scott relies on the following facts, which we
reproduce from the brief (SB 9-12):
(1) ICI announced in October, 1989 plans to build a plant in St. Gabriel, Louisiana to
make 134a under the trade name "KLEA".
(2) The announcement indicated ICI's intent to break ground at St. Gabriel in 1990 with
the plant scheduled to go on-line in 1992.
(3) Dr. Dattani, an employee of ICI Americas in Wilmington, Delaware, was a member
of the combined ICI U.S./U.K. research group responsible for developing the process to
be used in ICI's U.S. plant.
(4) Dr. Dattani was involved in the "Hotel" project from essentially its beginning to the
point where the U.S. plant was functioning commercially by the end of December 1992.
(5) The process to be used in the Louisiana plant was reduced to practice in the U.K.
as was finalized, or "frozen", by the end of February 1990.
(6) The ICI Americas involvement in the "Hotel" project required frequent and extensive
trips by Dattani and other ICI Americas employees to the U.K., and numerous
conferences in both the U.S. and U.K. in the period 1989-1990 with extensive exchange
of technical information.
10 "One having the first complete conception of an invention cannot hold the field against all comers by
diligent efforts, merely, to organize and procure sufficient capital to engage in the manufacture of his device
or mechanism for commercial purposes. This is a different thing from diligence in actual reduction to
practice." Seeberger v. Dodge, 1905 Dec. Comm’r Pats. 603 (1905).
8
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