Scott v. Finney, 94-1090
| Decision Date | 14 September 1994 |
| Docket Number | No. 94-1090,94-1090 |
| Citation | 32 USPQ2d 1115,34 F.3d 1058 |
| Parties | F. Brantley SCOTT and John H. Burton, Appellants, v. Roy P. FINNEY, Appellee. |
| Court | U.S. Court of Appeals — Federal Circuit |
Rudolph E. Hutz, Connolly, Bove, Lodge & Hutz, Wilmington, DE, argued, for appellants. With him on the brief was Harold Pezzner.
Thad F. Kryshak, Quarles & Brady, Milwaukee, WI, argued, for appellee. With him on the brief was Thomas W. Ehrmann.
Before LOURIE, RADER, and SCHALL, Circuit Judges.
The Board of Patent Appeals and Interferences awarded priority in Interference No. 102,429 to the senior party, Dr. Roy P. Finney. The Board held that the junior party, Dr. F. Brantley Scott and John H. Burton, did not show a reduction to practice before Dr. Finney's date of invention. Because the Board imposed an overly strict requirement for testing to show reduction to practice, this court reverses and remands.
This interference involves Dr. Finney's United States Patent No. 4,791,917, which was accorded the benefit of its May 15, 1980 parent application, and the Scott and Burton application, Serial No. 07/241,826, which was accorded the benefit of its parent application Serial No. 06/264,202, filed May 15, 1981. Although the Scott and Burton application claims a joint invention of both applicants, Dr. Scott is the sole inventor of the subject matter in interference No. 102,429.
The invention is a penile implant for men unable to obtain or maintain an erection. The prosthetic device is a self-contained unit that permits the patient to simulate an erection. The implant contains two reservoirs connected through a valve. The invention operates by shifting the inflating liquid between the two reservoirs. When the penis is flaccid, the invention maintains inflating liquid in a reservoir at the base of the penis. A simulated erection occurs when the liquid shifts through the valve into the elongated reservoir implanted in the forward section of the penis.
Prior art devices fell into two categories: flexible rods and inflatable devices. Flexible rods had the disadvantage of making the penis permanently erect. The prior inflatable devices relied on fluid from a source and pump external to the body to inflate tubes The Interference Count at issue states:
implanted in the penis. These devices also had several disadvantages.
An implantable penile prosthesis for implanting completely within a patient's penis comprising at least one elongated member having a flexible distal forward section for implantation within the pendulous penis, said forward section being constructed to rigidize upon being filled with pressuring fluid; a proximal, rearward section adapted to be implanted within the root end of the penis, said rearward section containing a fluid reservoir chamber, externally operable pump means in said member for transferring fluid under pressure to said flexible distal forward section of said member for achieving an erection; and valve means positioned within said member which open when said pump is operated so that fluid is forced from said pump through said valve means into said flexible distal forward section of said chamber.
The parties to this interference had contested related subject matter in an earlier interference, No. 101,149. The count of 101,149 was a species of the generic count in this interference. Dr. Scott won that earlier interference.
In this interference, No. 102,429, Dr. Finney's application has an earlier filing date than Scott's application. Dr. Scott still has, however, an earlier conception date. Dr. Scott did not present evidence of diligence after conception of his invention. See, e.g., Griffith v. Kanamaru, 816 F.2d 624, 626, 2 USPQ2d 1361, 1362 (Fed.Cir.1987). Rather, Dr. Scott opted to show an actual reduction to practice before Dr. Finney's date of invention.
Before the Board, Dr. Scott's primary evidence of actual reduction to practice was a videotape. The videotape showed an operation where the surgeon inserted Dr. Scott's prototype device into the penis of an anesthetized patient. The videotape showed the surgeon manipulating the implanted device. Several times the device simulated an erection when the surgeon manipulated the valve. Several times the fluid filled the forward reservoir. Several times the surgeon returned the penis to a flaccid condition by draining the fluid back into the rear reservoir. The Board found:
It is uncontested that the penile implant used in the in-and-out procedure did rigidify the penis by pressurization of the rear chamber and did produce an erection. After the device was actuated to form the erection, the valve mechanism was manipulated to allow the device to become flaccid....
Board opinion at 8-9.
Although not part of the count, the parties agree that the invention envisions implantation of two devices--one on either side of the penis. In the videotaped demonstration, the surgeon implanted only a single prosthesis into the patient. Although using only a single prosthesis, the videotape showed a penis with enough rigidity to produce an erection. After manipulating the implanted device through the skin to simulate having and losing an erection, the surgeon removed Dr. Scott's prototype and inserted a prior art external pump mechanism.
Dr. Scott supplied other evidence as well. He presented evidence of testing for leakage, disclosed that the fabrication material was common in implanted devices, and supplied the testimony of Dr. Drogo K. Montague, an expert in the field. Dr. Montague personally handled the device at issue and viewed the videotape. He testified that the video showed, even with only a single tube, sufficient rigidity for intercourse.
In opposition, Dr. Finney testified personally about the difficulty of determining sufficient rigidity for intercourse on the basis of insertion in an anesthetized patient. Both Drs. Finney and Montague agreed that insertion of two tubes would greatly enhance rigidity.
The Board discerned insufficient evidence to show reduction to practice. Specifically, the Board determined that Dr. Scott had not shown utility, i.e., that the device would successfully operate under actual use conditions for a reasonable length of time. Thus, the Board required "testing of an implantable medical device under actual use conditions or testing under conditions that closely simulate Because Dr. Scott had not tested his device in actual intercourse or in similar conditions to intercourse for a proper period of time, the Board determined that Dr. Scott had not reduced his invention to practice. The Board awarded the count to Dr. Finney. This appeal followed.
actual use conditions for an appropriate period of time." Board opinion at 8
The issue of reduction to practice is a question of law which this court reviews de novo. Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1376, 231 USPQ 81, 87 (Fed.Cir.1986), cert. denied, 480 U.S. 947, 107 S.Ct. 1606, 94 L.Ed.2d 792 (1987). This court reviews the Board's factual findings under the clearly erroneous standard. Coleman v. Dines, 754 F.2d 353, 356, 224 USPQ 857, 859 (Fed.Cir.1985).
The Scott and Burton application was copending with that of Dr. Finney. Consequently, as the junior party in this interference, Dr. Scott had the burden to show prior invention by a preponderance of evidence. Bosies v. Benedict, 27 F.3d 539, 542, 30 USPQ2d 1862, 1864 (Fed.Cir.1994); Harding v. Steingiser, 318 F.2d 748, 748, 138 USPQ 32, 33 (CCPA 1963). To show prior invention, the junior party must show reduction to practice of the invention before the senior party, or, if the junior party reduced to practice later, conception before the senior party followed by reasonable diligence in reducing it to practice. See Griffith, 816 F.2d at 626.
To show reduction to practice, the junior party must demonstrate that the invention is "suitable for its intended purpose." Steinberg v. Seitz, 517 F.2d 1359, 1363, 186 USPQ 209, 212 (CCPA 1975) (quoting In re Dardick, 496 F.2d 1234, 1238, 181 USPQ 834, 837 (CCPA 1974)). When testing is necessary to show proof of actual reduction to practice, the embodiment relied upon as evidence of priority must actually work for its intended purpose. Newkirk v. Lulejian, 825 F.2d 1581, 1582, 3 USPQ2d 1793, 1794 (Fed.Cir.1987). Because Dr. Scott relied on such testing, this court must examine the quality and quantity of testing asserted to show a reduction to practice.
Testing sufficient to show a reduction to practice has often been at issue in interference proceedings. Newkirk, 825 F.2d at 1582 (); see also Kimberly-Clark Corp. v. Johnson & Johnson, 745 F.2d 1437, 1445, 223 USPQ 603, 607 (Fed.Cir.1984) (same); Wiesner v. Weigert, 666 F.2d 582, 588, 212 USPQ 721, 726 (CCPA 1981) (same). By the same token, this court has also indicated "that '[s]ome devices are so simple and their purpose and efficacy so obvious that their complete construction is sufficient to demonstrate workability.' " King Instrument Corp. v. Otari Corp., 767 F.2d 853, 861, 226 USPQ 402, 407 (Fed.Cir.1985), cert. denied, 475 U.S. 1016, 106 S.Ct. 1197, 89 L.Ed.2d 312 (1986) (quoting Eastern Rotorcraft Corp. v. United States, 384 F.2d 429, 431, 155 USPQ 729, 730 (Ct.Cl.1967)). Indeed, the Supreme Court, in a case featuring evidence of testing, cited approvingly three decisions of the United States Court of Appeals for the District of Columbia which stated that simple devices need no testing to show reduction to practice. See Corona Cord Tire Co. v. Dovan Chem. Corp., 276 U.S. 358, 383, 48 S.Ct. 380, 387-88, 72 L.Ed. 610 (1928) (citing Roe v. Hanson, 19 App.D.C. 559 (1902); Lindemeyr v. Hoffman, 18 App.D.C. 1 (1901); and Mason v. Hepburn, 13 App.D.C. 86 (1898).
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