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Newkirk v. Lulejian, 825 F.2d 1581, 3 U.S.P.Q.2d 1793

Facts

The case involves an appeal from a decision by the United States Patent and Trademark Office Board of Appeals and Interferences, which awarded priority of invention to Donald A. Lulejian and others. The junior party, Newkirk, claimed to have reduced to practice an invention related to a camless electronic glassware conveyor delivery apparatus. However, the Board found that Newkirk did not demonstrate that his apparatus met all the limitations of the interference count, particularly that it could operate with a changed stored program before Lulejian's filing date.

The Board held that the junior party Newkirk had not proved reduction to practice of the claimed invention prior to the filing date (the earliest date proven) of the senior party Lulejian, for the reason that the embodiment of the invention relied on by Newkirk as proof of actual reduction to practice did not include every limitation of the interference count.

Issue

Did Newkirk prove actual reduction to practice of the claimed invention prior to Lulejian's filing date?

The dispositive question is whether Newkirk was required to show, with respect to the final clause of count 1, that he had achieved 'at least successful operation with one program and a change to a second program for which there was also successful operation', in order to prove reduction to practice of count 1.

Rule

To establish actual reduction to practice, an inventor must demonstrate that the embodiment relied upon as evidence of priority actually worked for its intended purpose and included every limitation of the interference count. This requires not only theoretical capability but actual operation under intended conditions.

Proof of actual reduction to practice requires demonstration that embodiment relied upon as evidence of priority actually worked for its intended purpose.

Analysis

The Board determined that Newkirk's apparatus did not satisfy the requirement of demonstrating successful operation with a changed stored program. The embodiment relied upon by Newkirk lacked the capability to alter the stored program as required by the interference count. The court emphasized that every limitation of the count must be present in the embodiment and function as intended, which Newkirk failed to prove.

We conclude that it was necessary for Newkirk to have demonstrated not only that his apparatus contained a means for altering the robot operation, but that he actually performed this step. Proof of actual reduction to practice requires more than theoretical capability; it requires showing that the apparatus of the count actually existed and worked for its intended purpose.

Conclusion

The court affirmed the Board's decision, concluding that Newkirk did not establish actual reduction to practice of the claimed invention.

The award to Lulejian of priority of invention of the counts is AFFIRMED.

Who won?

The prevailing party in this case is Donald A. Lulejian and his co-inventors. The court affirmed the Board's decision, which found that Newkirk did not prove that his apparatus met all the necessary limitations of the interference count, particularly regarding the actual operation with a changed stored program. This failure to demonstrate actual reduction to practice led to the conclusion that Lulejian was entitled to priority of invention.

The decision of the United States Patent and Trademark Office Board of Patent Appeals and Interferences, awarding priority of invention in Interference No. 101,000 to Donald A. Lulejian et al., inventors of the subject matter claimed in U.S. Patent No. 4,313,750, is affirmed.

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