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

  • 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 patent.
  • 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 party'.
      • 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 intended purpose."
      • 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 to practice.