GRAY et al v. ALTON et al - Page 11




                       III.   Discussion                                                                                           
                       A rebuttable presumption exists that the inventors made their invention in the                              
               chronological order of their effective filing dates.  The burden of proof shall be upon the party                   
               that contends otherwise. 37 CFR § 1.657(a). Alton argues that it conceived the invention prior                      
               to its accorded benefit date (Paper 1 at 3). Thus, Alton has the burden of proof.                                   
                       Conception is the formation in the inventor’s mind of a definite and permanent idea of                      
               the complete and operative invention as it is thereafter to be applied in practice.  Cooper v.                      
               Goldfarb, 154 F.3d 1321, 1327, 47 USPQ2d 1896, 1901 (Fed. Cir. 1998). "An idea is definite                          
               and permanent when the inventor has a specific, settled idea, a particular solution to the problem                  
               at hand, not just a general goal or research plan he hopes to pursue." Burroughs Wellcome Co. v.                    
               Barr Lab., Inc., 40 F.3d 1223, 1228, 32 USPQ2d 1915, 1919 (Fed. Cir. 1994). The conception                          
               must show possession of every limitation of the count and must be sufficient to enable one of                       
               ordinary skill in the art to make the invention without extensive experimentation.  Sewall v.                       
               Walters, 21 F.3d 411, 415, 30 USPQ2d 1356, 1359 (Fed. Cir. 1994).                                                   
                       An inventor’s testimony used to establish conception must be corroborated by                                
               independent evidence. Burroughs Wellcome Co. v. Barr Lab., Inc., 40 F.3d at 1228, 32 USPQ2d                         
               at 1919. All pertinent evidence must be evaluated when determining the credibility of an                            
               inventor’s testimony. For example, under a “rule of reason” analysis, circumstantial evidence of                    
               an independent nature may satisfy the corroboration requirement.   Reese v. Hurst v.                                
               Wiewiorowski, 661 F.2d 1222, 1230 , 211 USPQ 936, 940 (CCPA 1981); Cooper v. Goldfarb,                              
               154 F.3d at 1330, 47 USPQ2d at 1903. “However, the ‘rule of reason’ does not dispense with                          



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