Troy v. Samson Mfg. Corp.

To show prior actual reduction-to-practice, a party must show that it (1) was first to construct an embodiment that met every element of the challenged claim, and (2) that the embodiment operated for its intended purpose.

Opinion (Young): Troy sought judicial review of the Board of Patent Appeals and Interferences's final decision and order that a claim of his patent, for a gun rail, be canceled because it lacked priority over Samson's previously filed patent application, which claimed the same subject matter. A dissatisfied party may file a civil action for review of the Board's decision. In the civil action, either party may admit the record from the Board into evidence. The Board's conclusions of law are reviewed de novo, while its fact findings are reviewed for clear error. The reviewing court may also admit new evidence on questions that were before the Board. The Board determined that Troy was the junior party in the interference proceeding. As the junior party, he bore the burden of showing actual reduction to practice before Samson. To show actual reduction to practice, Troy was required to demonstrate both (1) that he had constructed an embodiment that met every element of the challenged claim, and (2) that the embodiment operated for its intended purpose. Although he produced new evidence, Troy was unable to demonstrate that he had constructed an embodiment that met every element of the cancelled claim, and therefore was unable to show reduction to practice that pre-dated Samson's. Troy also attempted to show that he was the first to conceive the idea in a definite form, or that Samson's efforts should have been found to inure to Tory's benefit. Troy was unable to show the prior conception of every element in the cancelled claim, and therefore failed to show prior conception. Similarly, Troy was unable to produce evidence showing that Samson was explicitly or implicitly working at his request, and accordingly failed to show that Samson's efforts inured to his benefit. Because Troy was unable to meet his evidentiary burdens, the District Court AFFIRMED the Board's order.