Interference 103,781
then exercised reasonable diligence in attempting to reduce
the invention to practice from a date just prior to the
other party’s conception to the date of his reduction to
practice. 35 U.S.C. § 102(g)(“In determining priority of
invention . . . there shall be considered . . . the
reasonable diligence of one who was the first to conceive
and last to reduce to practice, from a time prior to
conception by the other.”); Mahurkar v. C.R. Bard, Inc.,
79 F.3d 1572, 1578, 38 USPQ2d 1288, 1291 (Fed. Cir. 1996).
Mycogen Plant Sci., Inc. v. Monsanto Co., 252 F.3d at 1310,
58 USPQ2d at 1894. Because “Adang . . . states that Adang’s
actual reduction to practice of the invention defined by Count 2
was not prior to the filing date of the earliest application
upon which Adang is entitled to rely for benefit (i.e., USSN
07/242,482, filed September 9, 1988)” (AB 43), to establish
priority of invention with regard to Count 2, Adang must show
that it was first to conceive of the invention of Count 2 and
exercised reasonable diligence in attempting to reduce the
invention to practice from a date prior to the date of
Fischhoff’s conception to the date of Adang’s first reduction to
practice on September 9, 1988. Thus, before we consider and
evaluate the merits of Adang’s showing, we must first establish
the date Fischhoff first conceived of the invention of Count 2.
It is important to note that the parties to this
interference must be concerned with the scope of subject matter
encompassed by Count 2, not merely the subject matter defined by
Claims 1 and 11 of Adang’s involved U.S. Patent 5,380,831.
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