proposed fact. Ms. Johnson does not testify for Herman in support of its motion.
For these reasons, Herman substitute preliminary motion 2 is denied.
Alternatively, even crediting Herman's testimony, Herman's motion fails. Herman has
failed to sufficiently demonstrate conception of every count. In addition, Herman's story as to
why the inventorship is incorrect in the Barnes patent is insufficiently corroborated. Either of
these reasons alone is a basis for denying Herman second substitute preliminary motion 1.
Conceptio
The statutory provision, 35 U.S.C. § 116, regardingjoint inventorship is as follows:
[I]ventors may apply for a patent jointly even though (1) they did not physically work
together or at the same time, (2) each did not make the same type or amount of
contribution, or (3) each did not make a contribution to the subject matter of every claim
of the patent.
As explained earlier in this proceeding (Paper I at 5, Paper 20 at 3), Barnes is a joint
inventor of the Barnes patent if he made a contribution towards the conception of a single claim
(count). In order to demonstrate that Barnes is not ajoint inventor, Herman must demonstrate
that he alone conceived of counts 1-32 prior to 15 January 1999, the critical date. If Herman fails
to demonstrate conception of even one of the counts, Herman's motion fails. There are several
counts for which Herman fails to demonstrate a prior conception. We will discuss four of the
counts in detail.
Count 25
Herman has failed to sufficiently demonstrate conception of count 25 (ff 14) prior to the
critical date. Herman testified that he conceived of the invention of count 25 sometime during
the week of 8-15 January 1999 and disclosed the invention to the attorney responsible for
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