Interference No. 104,843 Paper 51
Kundu v. Ragunathan Page 15
and convincing evidence.12 Price v. Symsek, 988 F.2d 1187, 1190-91, 26 USPQ2d 1031, 1033
(Fed. Cir. 1993) (explaining the policy of applying the invalidity standard to patents challenged
by late filing applicants in terms of social disutility). "Clear and convincing evidence" is
evidence that produces in the mind of the trier of fact an abiding conviction that the truth of a
factual contention is highly probable. Price, 988 F.2d at 1191, 26 USPQ2d at 1034.
3. Test for suppression
In order for there to be an actual reduction to practice, the inventor must have
(1) constructed an embodiment or performed a process that met all the limitations of the count;
and (2) determined that the invention would work for its intended purpose. The inventor must
contemporaneously appreciate that the embodiment worked and met all of the limitations in the
count. Cooper v. Goldfarb, 154 F.3d 1321, 1327, 47 USPQ2d 1896, 1901 (Fed. Cir. 1998). In
theory, the invention is complete and ready for patenting as soon as there is an actual reduction to
practice. In the real world, however, nothing happens instantaneously. An inventor needs time
to prepare any disclosure to the public or USPTO. Moreover, social utility may be enhanced by
refinements in the disclosure, such as the identification of a best mode, which may require
additional time. Thus, a suppression analysis is a pragmatic balancing of reasonable real-world
delays and of the enhanced value of further perfecting of the invention against the social disutility
of further delay in disclosure. As this case shows, Kundu (and Ragunathan) benefitted from the
12 We need not decide if a different standard would apply to Ragunathan’s other involved patent and
application (the 6,268,356 patent and the 09/757,261 application) even though they were co-pending with Kundu’s
application for two reasons. First, Kundu did not argue that a different standard should apply for them. Second, if
Kundu cannot prevail against Ragunathan’s 065 patent, it would lose anyway, so the effect of Ragunathan’s 261
application and 356 patent is moot. Cf. Berman v. Housey, 291 F.3d 1345, 1355, 63 USPQ2d 1023, 1030 (Fed. Cir.
2002) (holding subsequent issuance of other patents did not affect a 35 U.S.C. 135(b) bar based on the first issued
patent).
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