Interference 103,781
this interference, Adang must show that it was first to conceive
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, and that
it exercised reasonable diligence toward later reducing that
invention to practice. Eaton v. Evans, 204 F.3d 1094, 1097, 53
USPQ2d 1696, 1698 (Fed. Cir. 2000). Mahurkar v. C.R. Bard, Inc.,
79 F.3d 1572, 38 USPQ2d 1288 (Fed. Cir. 1996), adds at 1578,
38 USPQ2d at 1291:
Where a party is first to conceive but second to
reduce to practice, that party must demonstrate reasonable
diligence toward reduction to practice from a date just
prior to the other party’s conception to its reduction to
practice. Griffith v. Kanamaru, 816 F.2d 624, 625-26,
2 USPQ2d 1361, 1362 (Fed. Cir. 1987).
Thus, our initial task is to determine if Adang was first to
conceive of the invention of a claim corresponding to Count 2.
To establish prior conception of the invention of Count 2, Adang
must show that prior to December 12, 1986, it had “a definite and
permanent idea of the complete and operative invention,”
Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d at 1228,
32 USPQ2d at 1919; i.e., Adang must show it had possession of an
invention having every feature recited in a claim to which Count
2 of this interference is alternatively directed and knowledge of
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