Interference No. 104,522 Paper`108
Nichols v. Tabakoff Page 11
Thus, we turn to Nichols' priority and derivation cases.
A. Actual reduction to practice
In order to establish actual reduction to practice, the inventor must prove that he
constructed an embodiment or performed a process that met all the limitations of the
claim, and that he determined that the invention would work for its intended purpose.
Slip Track Systems, Inc. v. Metal-Lite, Inc., 304 F.3d 1256, 1265, 64 USPQ2d 1423,
1429 (Fed. Cir. 2002); Cooper v. Goldfarb, 154 F.3d 1321, 1327, 47 JSPQ2d 1896,
1901 (Fed. Cir. 1998). Determining that the invention will work for its intended purpose
may require testing, depending upon the character of the invention and the problem
that it solves. Coope , 154 F.3d at 1327, 47 USPQ2d at 1901. "The adequacy of a
reduction to practice is to be tested by what one of ordinary skill in the art would
conclude from the results of the tests." Slip-Trac , 304 F.3d at 1265, 64 USPQ2d at
1429, quoting Winter v. Lebourg, 394 F.2d 575, 581, 157 LISPQ 574, 578 (CCPA
1968). To prove reduction to practice by inventor testimony, the inventor's testimony
must be corroborated by independent evidence. Slip-Trac , 304 F.3d at 1265, 64
USPQ2d at 1429; Coope , 154 F.3d at 1330, 47 USPQ2d at 1903. The corroboration
11may consist of testimony of a witness, other than an inventor, to the actual reduction to
practice or it may consist of evidence of surrounding facts and circumstances
independent of information received from the inventor." Hahn v. Wong, 892 F.2d 1028,
1032-33, 13 USPQ2d 1313, 1317 (Fed. Cir. 1989); Reese v. Hurst, 661 F.2d 1222,
1225, 211 USPQ 936, 940 (CCPA 1981). A reasonableness standard is used to review
the sufficiency of corroborating evidence of actual reduction to practice. Scoff v.
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