## Facts

- A USPTO patent interference determined priority of invention for an implantable penile prosthesis that transfers fluid between connected reservoirs through a pump/valve system to simulate erection and return to flaccidity.
- Finney was the senior party and received the benefit of a May 15, 1980 parent filing; Scott and Burton were the junior party and received the benefit of a May 15, 1981 parent filing.
- Scott sought to antedate Finney by proving an earlier actual reduction to practice of the interference count.
- Scott’s evidence included a videotaped surgical procedure in which a prototype was implanted in an anesthetized human patient, inflated and deflated several times to simulate erection, and then explanted.
- The tested prototype used only one unit, though the intended commercial embodiment contemplated bilateral components.
- Scott also offered evidence of leakage tests on the prototype.
- The Board of Patent Appeals and Interferences awarded priority to Finney, concluding Scott failed to show the device would operate successfully under actual use conditions for a reasonable time because it was not tested in actual intercourse (or similar conditions) for a proper period.
- Scott appealed to the U.S. Court of Appeals for the Federal Circuit.

## Issues

1. What standard governs the amount and character of testing needed to establish actual reduction to practice of a medical prosthesis in an interference.
2. Whether the Board erred by requiring proof of successful use under actual intercourse conditions (or close equivalents) over a specified period as a prerequisite to reduction to practice.

## Decision

- The Federal Circuit reversed the Board’s award of priority to Finney and remanded.
- The court held the Board imposed an overly strict testing requirement for reduction to practice.
- The court ruled that reduction to practice turns on a reasonableness, common-sense assessment of whether the evidence supports that the invention works for its intended purpose beyond a probability of failure, not beyond any possibility of failure.
- The court concluded Scott’s implantation, operation, and leakage evidence provided a reasonable basis to believe the invention would function as intended, and the lack of intercourse testing for a period of time was not legally required.

## Legal Principles

- Actual reduction to practice requires proof that the invention works for its intended purpose (utility) and would operate successfully under actual use conditions for a reasonable length of time.
- The nature and extent of testing needed to prove reduction to practice varies with the character of the invention and the problem it addresses.
- The required showing is utility beyond a probability of failure, not proof eliminating all possibility of failure.
- A tribunal may not impose rigid, unrealistic “actual use” testing demands when other evidence reasonably demonstrates the invention’s operability for its intended purpose.

## Conclusion

The Federal Circuit held that reduction to practice in an interference is evaluated under a flexible reasonableness standard and reversed a priority award that rested on an unduly demanding requirement for extended “actual use” human testing.


Scott v. Finney, 34 F.3d 1058 (Fed. Cir. 1994)