Interference No. 104,311
Sauer Inc. v. Kanzaki Kokyukoki Mfg. Co., Ltd.
opinion is that it took Sauer from November 1987 to October 1988 to design, build, and test an
integrated hydrostatic transmission based on the design shown in Exhibit 2046. In that regard,
note that to establish an actual reduction to practice, an inventor must prove that (1) he
constructed an embodiment or performed a process that meets all the limitations of the
interference count, and (2) he determined that the invention would work for its intended purpose.
Cooper v. Goldfarb, 154 F.3d 1321, 1326, 47 USPQ2d 1896, 1900 (Fed. Cit. 1998). A reduction
to practice does riot occur until the inventor has determined that the invention will work for its
intended purpose. Estee Lauder Inc. v. L'Oreal S.A., 129 F.3d 588, 593, 44 USPQ2d 1610, 1614
(Fed. Cit. 1997). Accordingly, Sauer did not actually reduce the invention to practice on August
17, 1988, and the earliest date of actual reduction to practice Sauer could have appears to be
sometime in October of 1988. Although some inventions are so simple and their purpose and
efficacy so obvious that their complete construction is sufficient to demonstrate workability,
Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1578, 38 USPQ2d 1288, 1291 (Fed. Cir. 1996),
Scott v. Finne , 34 F.3d 1058, 1061, 32 USPQ2d 1115, 1118 (Fed. Cir. 1994), Sauer does not
contend and we do not find that the invention of the count of this interference is such a case.
In its opposition brief, Kanzaki does not seek to demonstrate a date of conception for the
invention of the count prior to the date of its Japanese priority application, February 3, 1988.
Therefore, Sauer's date of conception need only be prior to February 3, 1988, provided that there
is a showing of reasonable diligence in reducing the invention to practice. Kanzaki disputes
Sauer's assertion that Sauer had conceived of the invention of the count by November 23, 1987.
- 8 -
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007