Interference No. 104,544 Paper149
McDonald v. Miyazaki Page 15
Diliaence
Since we conclude that McDonald did not establish either prior conception or
prior actual reduction to practice, the question of diligence is moot.
DERIVATION
A party asserting derivation must establish (1) pHor conception of the claimed
subject matter and (2) communication of the conception to the opponent. Price v.
Symse , 988 F.2d 1187, 1190, 26 USPQ2d 1031, 1033 (Fed. Cir. 1993); accord Eaton
Cori). v. Rockwell Int'l Co!p., 323 F.3d 1332,1344, 66 USP02d 1271, 1280 (Fed. Cir.
2003) (in the context of an invalidity suit).
[46] Since we concluded that McDonald has not established conception of the inventions of
either count prior to Miyazaki's accorded benefit date, we find no derivation of the
invention of either count by Miyazaki.
The question of communication is moot since it presupposes a conception to
communicate.
RECONSIDERATION OF DECISION ON MOTIONS
We have already reconsidered (Paper 106) our decision on motions.
Nevertheless, McDonald seeks reconsideration of our denials of McDonald preliminary
motions 2 and 5 and of our partial granting of Miyazaki preliminary motion 1. We have
reconsidered our earlier decision again and find nothing requiring revision.
Nevertheless, we provide the following elaborations in view of McDonald's brief.
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