Interference No. 103,146
825 F.2d at 1583, 3 USPQ2d at 1794. As was stated in Paine v.
Inoue, 195 USPQ 598, 604 (Bd. Pat. Int. 1976):
The nature of testing required to
establish a reduction to practice depends
on the particular facts of each case; a
common-sense approach is required to
determine if the testing is sufficient.
What is required is that it be reasonably
certain the invention will perform its
intended function in actual use. The tests
must be sufficient to establish utility
beyond probability of
failure, and must be sufficient to give
assurance the device will operate under
normal working conditions for a reasonable
length of time [citations omitted].
In Scott, 34 F.3d at 1063, 32 USPQ2d at 1119, the
interfering subject matter concerned a hydraulic, inflatable
penile implant. In considering what scope of testing of such
a device would establish an actual reduction to practice, the
court considered the in-an-out implantation and actuation of
the device in a human subject’s penis sufficient to establish
a reduction to practice. Clearly, mere bench testing did not
suffice.
In Medtronic, Inc. v. Daig Corp., 611 F.Supp. 1498,
227 USPQ 509 (D. Minn. 1985), aff'd, 789 F.2d 903, 229 USPQ
664 (Fed. Cir. 1986), the Minnesota District Court rejected
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