Inurement
As we note above, Furman does not argue that a reduction to practice occurred when
Dr. Korba, Dr. Biron, or Ms. Kondy learned that BCH- 189 exhibited anti-HBV activity in
Dr. Korba's test. In particular, Furman does not argue that the acts of Dr. Korba, Dr. Biron, of
Ms. Kondy inure to its benefit. Nonetheless, even if we were to consider the evidence pointed
out to us by Furman, we would determine that Furman has not established inurement.
Inurement involves a claim by an inventor that, as a matter of law, the acts of another
person should accrue to the benefit of the inventor. Cooper iý Goldfarb, 154 F.3d at 133 1,
47 USPQ2d at 1904. There are at least three requirements that must be met before a non
inventor's recognition of the utility of an invention can inure to the benefit of the inventor. First,
the inventor must have conceived the invention. Second, the inventor must have had an
expectation that the embodiment tested would work for the intended purpose of the invention.
Third, the inventor must have submitted the embodiment for testing for the intended purpose of
the invention. Genentech v. Chiron, 220 F.3d 1345, 1354, 55 USPQ2d 1636, 1643 (Fed. Cir.
2000). An inventor must show that the other person was working, either explicitly or implicitly,
at the inventor's request, but communication of the conception is not required. Cooper 1ý
Goldfarb, 154 F.3d at 1332, 47 USPQ2d at 1905 (Fed. Cir. 1998).
As noted above, we make no determination of whether Furman has shown conception.
However, Furman has not shown that Dr. Korba's testing and the results obtained from the
testing inure to the benefit of Dr. Furman and Dr. Painter as Furman has not shown, inter alia,
that:
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