Interference 103,781
to the first party to reduce an invention to practice
unless the other party can show that it was the first
to conceive the invention and that it exercised reasonable
diligence in later reducing that invention to practice.”
The party trying to show reasonable diligence “must account for
the entire period . . . until his reduction to practice[, actual
or constructive].” Griffith v. Kanamaru, 816 F.2d 624, 626,
2 USPQ2d 1361, 1362 (Fed. Cir. 1987). If periods of inactivity
occur, each period of inactivity may be explained and excused for
“reasonable everyday problems and limitations encountered by an
inventor”. Id. at 627, 2 USPQ2d at 1362. The question of
diligence is essentially one of fact. In re Jolley, 308 F.3d
1317, 1329, 64 USPQ2d 1901, 1910 (Fed. Cir. 2002).
II. Adang’s Case For Prior Conception Of Count 2 And
Reasonable Diligence Toward Reduction To Practice
The count determines what evidence is relevant to the issue
of priority. Case v. CPC Int’l, Inc., 730 F.2d 745, 749, 221
USPQ 196, 199 (Fed. Cir.), cert denied, 469 U.S. 872 (1984).
Here, Count 2 is alternatively directed to the invention defined
by any one of Claims 1-4, 7, and 15-22 of Barton’s U.S.
Application 07/827,906, filed January 30, 1992; any one of
Claims 3, 5, and 39-40 of Fischhoff’s U.S. Application
08/434,105, filed May 3, 1995; or any one of Claims 1-12 of
Adang’s U.S. Patent 5,380,831, issued January 10, 1995.
Accordingly, to establish priority of the invention of Count 2 of
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