device must include every count limitation); Szekely v. Metcalf, 455 F.2d 1393, 1396, 173 USPQ
116, 119 (CCPA 1972) (all the limitations of the counts have to be satisfied). The evidence must also
show that the embodiment is suitable for and actually worked for its intended purpose. Mahurkar,
79 F.3d at 1578, 38 USPQ2d at 1291; Scott v. Finney, 34 F.3d 1058, 1061, 32 USPQ2d 1115, 1118
(Fed. Cir. 1994); Newkirk, 825 F.2d at 1583, 3 USPQ2d at 1794; Wiesner v. Weigert, 666 F.2d 582,
588, 212 USPQ 721, 726 (CCPA 1981). In other words the embodiment must have a practical
utility. Fujikawa, 93 F.3d at 1563, 39 USPQ2d at, 1898-99. Testing need not show utility beyond
a possibility of failure, but only utility beyond a probability of failure. Scott, 34 F.3d at 1061062, 32
USPQ2d at 1118; Taylor v. Swingle , 136 F.2d 914, 917, 58 USPQ 468, 471 (CCPA 1943). And
there is no requirement that the embodiment be in a "commercially satisfactory stage of
development" to constitute a reduction to practice. Scott, 34 F.3d at 1063, 32 USPQ2d at 1118;
DSL Dynamic Sciences Ltd. v. Union Switch & Signal Inc., 928 F.2d 1122 , 1126, 18 USPQ2d 1152,
1155 (Fed. Cir. 1991); King Instrument Corp. v. Otari Corp.767 F.2d 853, 861, 226 USPQ 402, 407
(Fed. Cir. 1985); Randolph v. Shoberg, 590 F.2d 923, 926, 200 USPQ 647, 649-50 (CCPA 1979).
In proving an actual reduction to practice, the inventor, must provide independent
corroborating evidence in addition to his own statements and documents. Hahn v. Wong, 892 F.2d
1028, 1032, 13 USPQ2d 1313, 1317 (Fed. Cir. 1989). The corroboration “may consist of testimony
of a witness, other than an inventor, to the actual reduction to practice or it may consist of evidence
of surrounding facts and circumstances independent of information received from the inventor.”
Hahn, 892 F.2d at 1032-33, 13 USPQ2d at 1317; Reese v. Hurst, 661 F.2d 1222, 1225, 211 USPQ
936, 940 (CCPA 1981). When considering the sufficiency of corroborating evidence of an actual
reduction to practice a reasonableness standard is used. Scott, 34 F.3d at 1061-62, 32 USPQ2d at
1118; Holmwood v. Sugavanam , 948 F.2d 1236, 1238, 20 USPQ2d 1712, 1714 (Fed. Cir. 1991).
2. Engvall’s alleged actual reduction to practice 62
Engvall alleges an actual reduction to practice by one of the inventors, Dr. Marjatta Uotila,
prior to October 31, 1979. Dr. Uotila was hired to work in Dr. Ruoslahti’s laboratory at the City of
62
Engvall’s preliminary statement alleges reduction to practice of on or about October 4,
1979. However, Engvall’s brief alleges the date generally as “October, 1979.” Since October encompasses a range of
dates, it is appropriate to use the last day of the period, October, 31, 1979, as the alleged date of reduction to practice.
Oka, 849 F.2d at 584, 7 USPQ2d at 1172. However, Engvall has failed to prove an actual reduction to practice.
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