Interference No. 104,316
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. Kollonitsc , 806 F.2d 1024, 231
USPQ 967 (Fed. Cir. 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. Hiros , 161 F.3d 681, 684, 48 USPQ2d 1934, 1938 (Fed.
Cir. 1998); Bosies v. Benedict, 27 F.3d 539, 541-42, 30 USPQ2d 1862, 1864 (Fed. Cir. 1994).
Sauer asserts that Mr. Alan W. Johnson conceived of the invention of the count on
September 8, 1987, and actually reduced it to practice by August 17, 1988. However, from
Sauer's alleged Facts 86-101 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, ýI 5) that a part of the basis of his opinion is that it took Sauer from
November 1987 to October 1988 to design, build, and test an integrated hydrostatic transmission
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