(3) the buttons of the character key pad connected to the connection means interconnecting
the buttons of the numeric key pad to a tone generator so that subsets of the character key pad buttons
produce the same indication as one of the numeric key pad buttons (Bhagavatula Claim 7);
(4) a numeric keypad and an alphabetic keypad directly connected to a telephone dialing
circuit with the alphabetic keys connected with a predetermined mapping to the numeric keys of the
telephone (Bhagavatula Claim 9);
(5) switch contacts of the keyboard connecting or connectable to first and second inputs of
a dialing circuit to generate a dialing signal and the switch contacts being mapped to the numeric keys of
the telephone (Bhagavatula Claim 10 and Solomon Claim 1); and
(6) connecting the switch contacts of an alphabetic key board in a predetermined mapping to
the numeric keys of the telephone keypad and generating a telephone dialing signal by pressing a key on
the alphabetic keyboard which signal corresponds to the signal generated by pressing a numeric key
(Bhagavatula Claim 19 and Solomon Claim 11).
Solomon’s and Recalde’s testimony that Solomon “used the prototype device to order
flowers . . .” is of little evidentiary value in proving an actual reduction to practice. The testimony does not
tell us how the device was used to place the call. The testimony does not identify the number that was
called or, more importantly, how the number was dialed. As shown in the photographs, the device includes
a standard telephone. The telephone, without the use of the key board, could have been used to make the
call. Thus, the testimony does not establish, by a preponderance of the evidence, that an operative device
was constructed and, if it was constructed, how it was tested.
Solomon has failed to prove an actual reduction to practice of an embodiment within the scope of
the count.
3. Conception
Conception is the formation "in the mind of the inventor of a definite and permanent idea of the
complete and operative invention, as it is therefore to be applied in practice." Kridl v. McCormick, 105
F.3d 1446, 1449, 41 USPQ2d 1686, 1689 (Fed. Cir. 1997); Mahurkar v. C.R. Bard, Inc., 79 F.3d
1572, 1577, 38 USPQ2d 1288, 1290-91 (Fed. Cir. 1996); Burroughs Wellcome Co. v. Barr Labs., Inc.,
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