Interference 103,781
B. Senior Party Adang’s Case-In-Chief For Priority
I. Adang’s Reduction to Practice
Adang acknowledges that it did not actually reduce an
invention of Count 2 to practice prior to the September 9, 1988,
filing date of the earliest application upon which Adang is
entitled to rely for benefit (AB 43). Accordingly, to make
its case for priority of the invention of Count 2 of this
interference, Adang must show that it conceived of the invention
of Count 2 prior to December 12, 1986, the date the evidence
shows that Fischhoff first conceived of the invention of Count 2,
and that it exercised reasonable diligence toward constructive
reduction to practice of the invention of Count 2 throughout the
critical period beginning just before Fischhoff’s December 12,
1986, date of conception, until Adang’s constructive reduction to
practice on September 9, 1988. First quoting Christie v.
Seybold, 55 F. 69, 76 (6th Cir. 1883)(Taft, J.), and then quoting
Price v. Symsek, 988 F.2d 1187, 1190, 26 USPQ2d 1031, 1033 (Fed.
Cir. 1993), the Federal Circuit instructed in Mahurkar v. C.R.
Bard, Inc., 79 F.3d 1572, 1577, 38 USPQ2d 1288, 1290 (Fed. Cir.
1996):
[T]he person “who first conceives, and, in a mental sense,
first invents . . . may date his patentable invention back
to the time of its conception, if he connects the conception
with the reduction to practice by reasonable diligence on
his part, so that they are substantially one continuous
act.” . . . Stated otherwise, priority of invention “goes
-84-
Page: Previous 77 78 79 80 81 82 83 84 85 86 87 88 89 90 91 Next
Last modified: November 3, 2007