Interference No. 104,745
On 23 December, the Tuesday before Christmas, Dr. Burlingame replied to Dr. Baldwin's
above e-mail of that date by sending an e-mail reading "Mike/Marilyn - let's do it - Al."
LX 1082; Burlingame Decl. (LX 1075) ¶ 46.
Bai contends that Laiko's decision to have the laser repaired by Laser Science is
inconsistent with diligence because Laiko could have more quickly obtained an operative laser
by (a) purchasing the necessary parts to have Mr. Walls repair the broken laser in-house,
(b) disassembling one of the two mass spectrometers from Dr. Burlingame's laboratory which
contained a laser, (c) borrowing a laser from another department or branch of the University of
California, or (d) renting or purchasing a new or used laser, noting that the above-quoted e-mail
estimated the cost of a new laser as only $6,400. BOppBr 57-62. This argument is based on the
incorrect assumption that Laiko was required to choose the most expeditious course in
attempting a reduce to practice. See I Interference Law and Practice § 196 ("The twentieth
principle [of diligence] it is immaterial to the question of diligence that the inventor did not take
the most expeditious course."). Accord, De Solms v. Schoenwald, 15 USPQ2d 1507, 1511 (Bd.
Pat. App. & Int. 1990); Hoffman v. Schoenwald, 15 USPQ2d 1512, 1515 (Bd. Pat. App. & Int.
1990). See also Justus v. Appenzeller, 177 USPQ 332, 340 (Bd. Pat. Int. 1971)(citing Clement
v. McQuarrie, 278 F. 587, 589, 1922 C.D. 92, 94 (App. D.C. 1922) ("Perhaps, as was observed
by the Examiner of Interferences, they did not pursue the most expeditious course, but they were
doing something toward the end in view from the date of conception until the cases were actually
filed."); and Dickinson v. Swinehart, 263 F. 474, 476, 1920 C.D. 151, 153 (App. D.C. 1920) ("it
may be that the drawings could have been made in a shorter time, and that every moment of the
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