Interference No. 104,314
Sauer Inc. v. Kanzaki Kokyukoki Mfg. Co., Ltd.
August 17, 1988, did not commence until August 17, 1988, and evidently extended to sometime
in October of 1988. Sauer's own technical expert, Mr. Staffan Kaempe, revealed in his
testimony (Exhibit 2386, 115) that a part of the basis of his opinion is that it took Sauer from
November 1987 to October 1988 to design, build, and test an integrated hydrostatic transmission
based on the design shown in Exhibit 2046. In that regard, note that to establish an actual
reduction to practice, an inventor must prove that (1) he constructed an embodiment or
performed a process that meets all the limitations of the interference count, and (2) he determined
that the invention would work for its intended purpose. CogRer v. Goldfarb, 154 F.3d 1321,
1326, 47 USPQ2d 1896, 1900 (Fed. Cir. 1998). A reduction to practice does not occur until the
inventor has determined that the invention will work for its intended purpose. Estee Lauder Inc.
v. L'Oreal S.A., 129 F.3d 588, 593, 44 USPQ2d 1610, 1614 (Fed. Cir. 1997). Accordingly,
Sauer did not actually reduce the invention to practice on August 17, 1988, and the earliest date
of actual reduction to practice Sauer could have appeares to be sometime in October of 1988.
Although some inventions are so simple and their purpose and efficacy so obvious that their
complete construction is sufficient to demonstrate workability, Mahurkar v. C.R. Bard, Inc., 79
F.3d 1572, 1578, 38 USPQ2d 1288, 1291 (Fed. Cir. 1996), Scott v. Finney, 34 F.3d 1058, 1061,
32 USPQ2d 1115, 1118 (Fed. Cir. 1994), Sauer does not contend and we do not find that the
invention of the count of this interference is such a case.
In its opposition brief, Kanzaki does not seek to demonstrate a date of conception for the
invention of the count prior to the date of its Japanese priority application, February 3, 1988.
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