establishing a reduction to practice prior to Gambaro=s filing date. Goddard has failed to meet
his burden.
In establishing an actual reduction to practice, Goddard must demonstrate that he
constructed a hand-held device that met every requirement of interference Count 1. Eaton v.
Evans, 204 F.3d at 1097, 53 USPQ2d at 1698. As set forth in requirements [2] and [6], Count 1
requires a hand-held device which has the ability to enter information into an electronic device.
Yet, none of Goddard’s models were proven to have been capable of delivering information in
any form, let alone entering information into an electronic system. Moreover, Goddard has
failed to establish that the models possessed selectively actuable keys. All of Goddard’s Models
A1 and 1 through 7 are merely demonstrative models or mock-ups of the outer appearance of a
hand-held device. In their form as constructed, they could not be expected to perform the
claimed function of entering information into an electronic system. Accordingly, Goddard’s
models were not devices which met every requirement of the count.
Even accepting Goddard=s argument that Model 3 possessed metallic keys for the
purpose of entering information into an electronic system, Goddard has failed to demonstrate
that the Model 3 controller was actually capable of entering such information. The “thumb
tacks” of Model 3 have not been shown to have been electronically connectable to any other
component in the mock-up. Thus, none of the models have been shown to have been an actual
working device. At most, they represented only a unit in the midst of construction, i.e., a work-
in-progress. As such, these models were not complete devices and do not establish an actual
reduction to practice. Newkirk v. Lulejian, 825 F.2d 1581, 1583, 3 USPQ2d 1793 (Fed. Cir.
1987) (Proof of actual reduction to practice requires more than theoretical capability).
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