Furman argues that Dr. Painter and Dr. Furman knew of the protein similarities of HIV
and HBV and thus had a "reasonable assurance that BCH-] 89 would be useful in the treatment of
HBV as well as HIV" (Paper 88 at 19). However, even if Furman has sufficiently establis hed
that Dr. Painter and Dr. Furman had a "reasonable assurance" that BCH-] 89 had anti-HBV
activity, Furman has not sufficiently explained why only a reasonable assurance of efficacy is
sufficient for a reduction to practice in the situation before us.
For instance, Furman has not argued that the invention of the counts is so simple that
successful testing would not be required to establish a reduction to practice. See Mahurkar v.
CR. Bard, Inc., 79 F.3d 1572, 1578, 38 USPQ3d 1288, 1291 (Fed. Cir. 1996) ("In fact, some
inventions are so simple and their purpose and efficacy so obvious that their complete
construction is sufficient to demonstrate workability"). Instead, Furman argues that (Paper 88
at 16):
It is clear from Burroughs Wellcome [Burroughs Wellcome Co. v. Barr Lab., Inc.)
that when inventors set out with a general goal of finding a method of treatment
and the inventors had formulated the idea of the invention to the point that they
express it clearly in written form, the invention has been reduced to practice even
before testing proves their inventive concept to be correct,
Furman directs us to no particular portion of the Burroughs Wellcome decision.
However, our understanding of the decision is not the same as Furman's. In particular, the
Burroughs decision states that the fact that the inventors set out with the general goal of finding a
method to treat AIDS and had formulated the idea of the invention to the point that they could
express it clearly in the form of a draft patent application was evidence "that the idea was clearly
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