Interference No. 104,313
Sauer Inc. v. Kanzaki Kokyukoki Mfg. Co., Ltd.
Sauer has not cited to any authority, and we are aware of none, that supports its position
that diligence is a measure of how quickly, in absolute measure of time, one reduce an invention
to practice, as compared to some "norm." In contrast, we note that quoting from a Sixth Circuit
opinion from 1893, the Court of Appeals for the Federal Circuit, in Mahurkar v. C.R. Bard Inc.,
79 F.3d 1572, 1577, 38 USPQ2d 1288, 1290 (Fed. Cir. 1996), stated:
[T]he person "who first conceives, and, in a mental sense, first invents.... may
date his patentable invention back to the time of its conception, if he connects the
conception with its reduction to practice by reasonable diligence on his part, so
that they are substantially one continuous act." (Emphasis added.)
For the foregoing reasons, continuity of steadfast effort is the linchpin for determining the
presence of reasonable diligence. With the un-excused gap of more than three months from
November 25, 1987 to February 28, 1988, more than three weeks of which are within the critical
period commencing from February 3, 1988, Sauer has failed to show the necessary reasonable
diligence. In its reply, Sauer argues that the public's interest was protected because despite the
initial gap, it still completed reduction to practice in a short period of time. We disagree. Had
there not been this three month gap, more than three weeks of which is in Sauer's critical period,
Sauer most likely could have reduced the invention to practice earlier. In any event, as already
explained above, the issue at hand is not the overall completion time, but whether there had been
steadfast and continuous effort sufficient to constitute reasonable diligence. Here, there was not.
Furthermore, it is also questionable how Sauer can group all "transmissions" together as
having a "normal" time period for design, construction, and testing. The basis is not articulated.
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