Interference No. 102,572
which in some cases requires testing of the product. Birmingham v. Randall, 171 F.2d
957, 958-959, 80 USPQ 371, 372 (CCPA 1948). Whether a product must be tested in
order to establish a reduction to practice, and if so, what tests are necessary is a question
which must be decided on the basis of the facts of the particular case involved. Blicke,
241 F.2d at 720-21, 112 USPQ at 475. The character of testing varies with the character
of invention and the problem it solves. Scott v. Finney, 34 F.3d 1058, 1061-1062, 32
USPQ2d 1115, 1118 (Fed. Cir. 1994). Complex inventions require laboratory tests that
“accurately duplicate actual working condition in practical use” Id. When complex
inventions are involved, a correlation between the test conditions and actual use conditions
must be shown Id. When reviewing the sufficiency of evidence for reduction to practice a
“reasonableness” standard is applied. Holmwood v. Sugavanam, 948 F.2d 1236, 1238,
20 USPQ2d 1712, 1714 (Fed. Cir. 1991). Lastly, there must be an appreciation of the
existence of an embodiment of the invention and the operability of the embodiment. Estee
Lauder v. L’Oreal, 129 F.3d 588, 595-595, 44 USPQ2d 1610, 1615 (Fed. Cir. 1997);
Silvestri v. Grant, 496 F.2d 593, 597, 181 USPQ 706, 706 (CCPA 1974), cert. denied,
420 U.S. 928 (1975); Heard v. Burton, 333 F.2d 239, 243, 142 USPQ 97, 100 (CCPA
1964). See also, D. Chisum Int. Law & Practice §10.06[2](1995).
The reduction to practice must be corroborated in point of time. An 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.
24
Page: Previous 17 18 19 20 21 22 23 24 25 26 27 28 29 30 31 Next
Last modified: November 3, 2007