Prior use

Fed. Cir. defines "user"; applies 102(g) (11/29/07)

<box right 40% blue | 35 U.S.C. §102> <html><font size=“-1”></html>A person shall be entitled to a patent unless -

(g)(2) before such person's invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other. <html></font></html></box>

In z4 Techs., Inc. v. Microsoft Corp., 1) the Fed. Cir. affirmed the lower court ruling with respect to application of 102(g), holding that, “Microsoft bore the burden of demonstrating by clear and convincing evidence that BP 98 constituted an actual reduction to practice of the invention claimed in z4’s patents.” Actual reduction to practice requires, said the court, (1) he constructed an embodiment or performed a process that met all the limitations . . . and (2) he determined that the invention would work for its intended purpose.” Quoting Cooper v. Goldfarb 2). Quoting Slip Track Sys., Inc. v. Metal-Lite, Inc., 304 F.3d 1256, 1267 (Fed. Cir. 2002) )), the Fed. Cir. further stated that testing is required to demonstrate reduction to practice in some instances because without such testing there cannot be sufficient certainty that the invention will work for its intended purpose.“ Because the necessity and sufficiency of such testing are factual issues, see id. at 1268, substantial evidence in the record supporting a finding that Microsoft’s LVP software did not work for its intended purpose will suffice to support the jury’s verdict that z4’s patents are not invalid for anticipation citing Eli Lilly & Co. v. Aradigm Corp. 3) and Taskett v. Dentlinger, 4). The court concluded, “we agree with z4, however, that the record contains substantial evidence for a reasonable jury to conclude that the anti-piracy feature of BP 98 did not work even to reduce piracy.

2007 U.S. App. LEXIS 26567
154 F.3d 1321, 1327 (Fed. Cir. 1998)
376 F.3d 1352, 1362 (Fed. Cir. 2004) (noting that when we review the denial of a post-verdict JMOL “on a mixed question of law and fact . . . we must sustain the jury's conclusion unless the jury was not presented with substantial evidence to support any set of implicit findings sufficient under the law to arrive at its conclusion”)
344 F.3d 1337, 1339 (Fed. Cir. 2003) (noting that reduction to practice is a question of law predicated on subsidiary factual findings)

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