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Test Facility Supports Reduction to Practice of Count Concerning Method of Using a Network

03-1151
September 26, 2003

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Last Month at the Federal Circuit - October 2003

Judges: Michel (author), Dyk, and Prost

In Taskett v. Dentlinger, No. 03-1150 (Fed. Cir. Sept. 26, 2003), the Federal Circuit affirmed a ruling by the Board awarding priority to junior party, Dale H. Dentlinger, who had proven reduction to practice of the invention claimed in the count before John M. Taskett’s filing date.

The Board declared an interference between applications filed by Taskett and Dentlinger six days apart in June 1995. The count covered a process for the automated purchases of prepaid telephone services. The Board concluded that Dentlinger was entitled to priority based on his earlier reduction to practice of the subject matter of the count. Taskett contests that the Board’s conclusion was wrong because it was based on tests that were not sufficiently complete. The Board had found that the use of a switch at EDS (Dentlinger’s employer) and a dummy account could satisfy the count, such that the tests did not require actual financial authorization from a third-party institution, even though the count uses the word “financial authorization.” The Board also concluded that the testimony of two of Dentlinger’s employees and a test receipt dated October 11, 1994, showed the required reduction to practice by a preponderance of the evidence. Taskett, relying on his filing date, argued that the count could only be fulfilled if real money from a real bank account at a third-party financial institution was actually debited and actual telephone calls were made based on the printed receipt.

The Federal Circuit rejected this argument, concluding that the count in question did not require financial authorization from a third party. The test network in question included network elements, such as an initiating terminal and a central terminal that performed the requirements of the count and withdrew funds from a sample checking account. A printed receipt reflected this withdrawal and provided an appropriate call-in number. Though the funds may not have been real, the financial authorization, as required by the count, was. This test need not occur under conditions of actual commercial use.