BAI et al v. LAIKO et al - Page 20




                Interference No. 104,745                                                                                                 

                        (emphasis omitted).  Conception must include every feature or limitation of the claimed                          
                        invention.  Davis v. Reddy, 620 F.2d 885, 889, 205 USPQ 1065, 1069 (CCPA 1980).                                  
                        "Conception must be proved by corroborating evidence which shows that the inventor                               
                        disclosed to others his 'complete thought expressed in such clear terms as to enable those                       
                        skilled in the art' to make the invention."  Coleman, 754 F.2d at 359, 224 USPQ at 862                           
                        (quoting Fields v. Knowles, 37 C.C.P.A. 1211, 183 F.2d 593, 601, 86 USPQ 373, 379                                
                        (CCPA 1950)).  However, "there is no final single formula that must be followed in                               
                        proving corroboration."  Berry v. Webb,  56 C.C.P.A. 1272, 412 F.2d 261, 266,                                    
                        162 USPQ 170, 174 (CCPA 1969).  Rather, the sufficiency of corroborative evidence is                             
                        determined by the "rule of reason."  Price [v. Symsek], 988 F.2d [1187,] at 1195,                                
                        26 USPQ2d [1031,] at 1037 [(Fed. Cir. 1993)]; Berry, 412 F.2d at 266, 162 USPQ at 173.                           
                                                                                                                                        
                        Dr. Michnowicz, then the manager of Intellectual Property and New Technologies at                                
                Hewlett-Packard (HP), the predecessor of assignee Agilent,20  testified that by no later than the                        
                end of November 1997, he was approached by inventor Steven Fischer regarding the possibility                             
                of  including research related to generating ions using a laser and matrix at atmospheric pressure                       
                in the Mass Spectrometry research and development group, which was within Michnowicz's area                              
                of responsibility.  Michnowicz Decl.  (BX 2092) ¶¶ 4-5.  In support of this proposed program of                          
                research, Dr. Michnowicz authorized Jian Bai, an expert in MALDI-TOF, to work with Fischer                               
                and approved the acquisition of the necessary parts to develop an AP-MALDI apparatus.  Id.                               
                at ¶ 5.                                                                                                                  
                        In November 1997, a first prototype of the AP-MALDI apparatus allegedly was                                      
                assembled in Lab 23 and tested with a mass spectrometer without success.  Bai Decl. (BX 2087)                            
                ¶¶ 29-37; Fischer Decl. (BX 2044) ¶¶ 27-35.  Fischer explains:                                                           
                34. Initially, we had attempted to acquire an ion trap as it would facilitate ion                                        
                        collection for AP-MALDI.  Because an ion trap was not available, we                                              
                        acquired a single quadrapole liquid chromatography/mass spectrometry                                             

                20  Bai Decl. (BX 2087) ¶ 2.                                                                                             
                                                                 - 20 -                                                                  





Page:  Previous  13  14  15  16  17  18  19  20  21  22  23  24  25  26  27  Next 

Last modified: November 3, 2007