Streck, Inc. v. Research and Diagnostic Systems, Inc.

For purposes of determining priority of an invention, to establish an actual reduction to practice, it is necessary to show that the claimant had possession of the subject matter and that it was shown or known to work for its intended purpose.

Research and Diagnostic Systems, Inc. (“R&D”) appealed the decision of the judgment of the District Court for the District of Nebraska, deciding the question of priority of invention in an action brought under 35 U.S.C. §146 (Civil action in case of interference) in favor of Streck, Inc. (“Streck”). The invention at issue was a hematology instrument, which was used to analyze samples of blood and measure the different types of blood cells in a particular sample. Determination of priority as between competing inventors is guided by rules that have arisen from the activities of technology based creativity. In priority disputes, the questions of conception and reduction to practice are deemed to be matters of law, founded on facts. For purposes of determining priority of an invention, to establish an actual reduction to practice, it is necessary to show that the claimant had possession of the subject matter and that it was shown or known to work for its intended purpose, and the inventor must have recognized that the tests were successful. The Court found that R&D failed to establish priority of invention as to the patent for hematology instruments, that they failed to establish that they were first to invent by a preponderance of the evidence, and that the record did not contain any evidence that R&D’s earlier in time samples of the hematology instruments were actually effective. Therefore, the Court AFFIRMED the decision of the district court, awarding priority of invention to Streck.

U.S. Court of Appeals, Federal Circuit