Moreover, proof of actual reduction to practice requires a showing that the embodiment
relied upon as evidence of priority actually worked for its intended purpose. Eaton v. Evans,
204 F.3d at 1097, 53 USPQ2d at 1698; DSL Dynamic Sciences Ltd. v. Union Switch & Signal,
Inc., 928 F.2d 1122, 1125, 18 USPQ2d 1152, 1154 (Fed. Cir. 1991). As recognized in
Goddard’s Reply Brief: “The purpose of the ergonomic keyboard design if [sic] for a hand-held
device for use with an electronic system.” (Goddard Reply Brief, Paper No. 223, p. 2). Thus,
Goddard must show that the device worked for this purpose in order to demonstrate an actual
reduction to practice of the invention embodied in Count 1. Yet, even if we were to assume that
requirements [2] and [6] were not part of the count, Goddard has failed to establish that the
devices actually worked for their intended purpose of transferring information to an electronic
device. As stated in Goddard Interrogatory Answer No. 4, Goddard has admitted that: “No
fabricated hand-held device designed by party Goddard is known to have entered information
into an electronic system prior to the filing of the application of party Goddard.” (Goddard
Record, p. 20, Goddard Answers to Written Interrogatories, Interrogatory No. 4). Accordingly,
even were we to accept Goddard’s models as finished products, Goddard has failed to establish
an earlier reduction to practice of a device according to Count 1 by a preponderance of the
evidence.
V. Junior Party's Renewed Motion for Benefit
During the time period for filing preliminary motions, Goddard filed a preliminary
motion under 37 CFR § 1.633(f) to be accorded the benefit of an earlier filing date. That motion
was denied on January 12, 1999. (Paper No. 44). In its brief for final hearing, Goddard included
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