Interference No. 104,311
Sauer Inc. v. Kanzaki Kokyukoki Mfg. Co., Ltd.
The diligence at issue is that for reducing the invention of the count to practice, not that
in connection with unrelated activities or inventions, although sufficiently related activities may
sometimes qualify as being directed to reducing the invention of the count to practice. Naber v.
Cricchi, 567 F.2d 382, 385, 196 USPQ 294, 296 (CCPA 1977)("It is doubtless true that work
quite unconnected with the reduction to practice cannot be considered. But whether particular
work is sufficiently connected with the invention to be considered to be in the area of reducing it
to practice must be determined in the light of the particular circumstances of the case which may
be as varied as the mind of man can conceive."); see also Bey v. Kollonitsch, 806 F.2d 1024, 231
USPQ 967 (Fed. Cit. 1986).
Because Sauer's involved patent was at one time co-pending with Kanzaki's involved
application, Sauer's burden of proof with regard to demonstrating priority is by a preponderance
of the evidence. See e.g., Bruning v. Hirose, 161 F.3d 681, 684, 48 USPQ2d 1934, 1938 (Fed.
Cir. 1998); Bosies v. Benedic 27 F.3d 539, 541-42, 30 USPQ2d 1862, 1864 (Fed. Cit. 1994).
Sauer asserts that Mr. Joseph E. Louis and Mr. Alan W. Johnson had conceived of the
invention of the count at the latest by November 23-25, 1987, the time of the technical meeting
between Sauer and Kanzaki personnel, and had further actually reduced it to practice by August
17, 1988. However, from Sauer's alleged Facts 103-118, it is apparent that testing on the
prototype apparatus assembled on August 17, 1988, did not commence until August 17, 1988,
and evidently extended to sometime in October of 1988. Sauer's own technical expert, Mr.
Staffan Kaempe, revealed in his testimony (Exhibit 2386, 115) that a part of the basis of his
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