Finney came up with a medical
device. Scott and Burton came up with the same basic invention. Both
filed applications for patents.
The facts showed that Scott
and Burton came up with the invention first (aka conception), but that Finney was the first to file for a
Since both parties
independently attempted to patent the medical device, the USPTO had to
determine who had invented it first.
Based on the principle of interference (codified in 35 U.S.C. §102(g))
the first filer, Finney, is the 'senior party', and Scott is the 'junior
The patent goes to the
senior party unless the junior party establishes that they had both come
up with the idea (aka conception)
and that the invention had been reduced to practice prior to the senior party filing.
One exception, if the
junior party can show that they were the first to conceive, but the second to reduce to
practice, but they were diligent in reducing the invention to practice, then
they still win!
The USPTO found that the
patent should go to Finney. Scott and Burton appealed.
The USPTO found that Scott
and Burton had not reduced to practice prior to Finney's filing date.
Scott and Burton showed a
video of the medical device being implanted and tested on an unconscious
patient. The USPTO found that this did not constitute reduction to
practice because the testing was not
performed under the actual use conditions that would occur when the
patient was awake and actually trying to use the device.
The Appellate Court reversed.
The Appellate Court found
the term reduced to practice
should be read to mean that the invention is "suitable for its
See Steinberg v. Seitz (517 F.2d 1359 (1975)).
The Court found that proving
reduction to practice requires
some sort of testing, but how much testing should be required is
dependent on how complicated the invention is.
Simple inventions require
less testing than complicated ones.
The Court found that the reduction
to practice standard was not that the
testing require actual use under actual conditions, but that the
invention will work to overcome the problem it addresses.
The Court found that based
on the facts in this case, Scott and Burton had demonstrated that their
medical device worked. Therefore they met the reduction to practice standard.
Basically, in this case the
Court noted that the device was just an improvement on an existing
device that everyone already knew worked. Scott and Burton didn't have
to prove that the device worked, only that their improvement to the
device worked. The Court felt that they met that standard.
The Court noted that
getting FDA approval for the device was not required to show reduction