## Facts

- The dispute concerned an ornamental design for a lock escutcheon plate.
- Arbib et al. were the senior party, based on a design patent application filed November 4, 1954, later issuing as U.S. Design Patent No. 175,143 on July 19, 1955.
- Fitzgerald was the junior party, based on a later-filed design application (filed July 11, 1955).
- Fitzgerald relied on the following work product to establish priority:
  - May 21, 1954: pencil drawing of the design.
  - June 3, 1954: colored perspective drawing of the design.
  - December 2, 1954: orthographic layout.
  - January 13, 1955: dimensioned detailed drawing suitable for fabrication.
  - March 22, 1955: wooden pattern (model) of the escutcheon plate.
- In the Patent Office interference, Arbib et al. offered no testimony and relied on their filing date as their date of conception and constructive reduction to practice.
- Fitzgerald argued his June 3, 1954 finished colored drawing should qualify as actual reduction to practice for a design and urged limiting or overruling prior authority requiring a physical embodiment for designs of three-dimensional articles.
- The Board of Patent Interferences held Fitzgerald’s drawings established conception only, and that he failed to prove reasonable diligence from just before November 4, 1954 to March 22, 1955.
- Fitzgerald appealed from the Board’s award of priority to Arbib et al.

## Issues

1. Whether drawings, including a finished colored perspective drawing, can constitute actual reduction to practice for a design of a three-dimensional article in an interference.
2. If drawings are only conception evidence, whether Fitzgerald proved reasonable diligence from just before the senior party’s filing date until Fitzgerald’s reduction to practice sufficient to establish priority.

## Decision

- The Court of Customs and Patent Appeals affirmed the Board’s award of priority to Arbib et al.
- The court held Fitzgerald’s drawings did not constitute actual reduction to practice for a design directed to a three-dimensional article; a physical embodiment was required.
- The court held Fitzgerald failed to carry his burden to prove reasonable diligence during the critical period preceding the senior party’s filing date through Fitzgerald’s reduction to practice.
- Because Fitzgerald proved neither an earlier actual reduction to practice nor conception coupled with required diligence, priority remained with Arbib et al.

## Legal Principles

- For a design of a three-dimensional article, drawings may evidence conception but do not, by themselves, establish actual reduction to practice; the design must be embodied in a physical structure.
- In an interference, the junior party bears the burden to prove priority by a preponderance of the evidence.
- A party first to conceive but last to reduce to practice must prove reasonable diligence from just before the opposing party’s effective date (including a filing date used as constructive reduction to practice) until the party’s own reduction to practice; failure to prove such diligence defeats priority based on earlier conception.

## Conclusion

The court affirmed that a design for a three-dimensional article is not actually reduced to practice by drawings alone and that a junior party claiming earlier conception must prove continuous reasonable diligence through reduction to practice; Fitzgerald failed on both points, so priority was awarded to Arbib et al.


Fitzgerald v. Arbib, 268 F.2d 763 (C.C.P.A. 1959)