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Scott v. Finney

United States Court of Appeals for the Federal Circuit

September 14, 1994, Decided

94-1090

Opinion

 [***1116]  [*1059]   RADER, Circuit Judge.

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.

BACKGROUND

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 [**2]  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  [*1060]  implanted in the penis. These devices also had several disadvantages.

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34 F.3d 1058 *; 1994 U.S. App. LEXIS 25151 **; 32 U.S.P.Q.2D (BNA) 1115 ***

F. BRANTLEY SCOTT AND JOHN H. BURTON, Appellants, v. ROY P. FINNEY, Appellee.

Prior History:  [**1]  Appealed from: U.S. Patent and Trademark Office Board of Patent Appeals and Interferences. (Interference No. 102,429).

Disposition:  The decision was reversed and remanded, because the Board of Patent Appeals erroneously held that appellants were required to show human testing of the invention to demonstrate a reduction to practice.

CORE TERMS

testing, invention, reduction to practice, implanted, conditions, penis, actual use, erection, valve, reservoir, videotape, intercourse, workability, intended purpose, manipulated, inflatable, rigidity, simulate, fluid, surgeon, penile, solved, cases, prosthetic, insertion, flexible, patient, pump

Administrative Law, Judicial Review, Reviewability, Factual Determinations, Civil Procedure, Appeals, Standards of Review, De Novo Review, Patent Law, US Patent & Trademark Office Proceedings, Appeals, Clearly Erroneous Review, Invention Date & Priority, General Overview, Jurisdiction & Review, Defenses, Inequitable Conduct, Interference Proceedings, Examinations, Statutory Bars, Experimental Use Exception, Elements