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

United States Court of Appeals
for the Federal Circuit
__________________________
STRECK, INC.,
Plaintiff-Appellee,
v.
RESEARCH & DIAGNOSTIC SYSTEMS, INC.,
Defendant-Appellant.
__________________________
2011-1045
__________________________
Appeal from the United States District Court for the
District of Nebraska in Case No. 09-CV-0410, Chief Judge
Joseph F. Bataillon.
___________________________
Decided: October 20, 2011
___________________________
Floyd R. Nation, Winston & Strawn LLP, of Houston,
Texas, argued for plaintiff-appellee. With him on the brief
were Merritt D. Westcott and Melinda K. Lackey. Of coun-
sel on the brief was Richard L. Stanley, of Houston, Texas.
Martin M. Zoltick, Rothwell, Figg, Ernst & Manbeck,
P.C., of Washington, DC, argued for defendant-appellant.
With him on the brief were Kurt J. Niederluecke and Grant
D. Fairbairn, of Fredrikson & Byron, of Minneapolis, Min-

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nesota. Of counsel was Glenn E. Karta, Rothwell, Figg,
Ernst & Manbeck, of Washington, DC.
__________________________
Before NEWMAN , O'M ALLEY, and REYNA, Circuit Judges.
N EWMAN , Circuit Judge.
This appeal is from the judgment of the United States
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”). The
district court awarded priority to the senior party, Streck,
Inc.1 The junior party, Research & Diagnostic Systems, Inc.
(“R&D”), appeals, raising questions concerning (1) the
procedures, burdens, and standards for a §146 action, and
(2) the correctness of the district court’s decision. The
district court’s award of priority is affirmed, for the court
correctly applied the relevant procedural and substantive
law, and error has not been shown in the court’s factual
findings and conclusions of law.
LITIGATION BACKGROUND
In 2006 Streck filed suit against R&D in the United
States District Court for the District of Nebraska, asserting
that R&D was infringing Streck’s U.S. Patents No.
6,200,500 (“the ’500 patent”), the invention of Streck em-
ployee Dr. Wayne Ryan; and No. 6,221,668 (“the ’668 pat-
ent”) and No. 6,399,388 (“the ’388 patent”), inventions of Dr.
Ryan and Streck employee John Scholl. R&D raised the
defense that the Streck patents are invalid on the ground
that R&D’s employee, Dr. Alan Johnson, was the earlier
inventor of the same invention as patented by Streck. The
1 Streck, Inc. v. Research & Diagnostic Sys., Inc., 744
F. Supp. 2d 970 (D. Neb. 2009).

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infringement suit was tried to a jury, and the issue of prior-
ity of invention garnered testimonial and documentary
evidence by both sides, including the live testimony of
seventeen witnesses and nearly 200 exhibits. The jury was
instructed:
R&D must prove by clear and convincing evidence
(1) that before the patentee reduced his invention to
practice, Dr. Alan Johnson reduced to practice a
product or method that included all of the elements
of [the asserted claims]; and (2) that Dr. Alan John-
son did not abandon, suppress, or conceal his inven-
tion before October 18, 1999.
Streck, Inc. v. Research Diagnostic Sys., Inc., No. 8:06-cv-
458, Final Jury Instruction 20, Dkt. No. 319. This instruc-
tion was embodied in a special interrogatory for each of the
eight patent claims on which the infringement action was
focused:
Has R&D proven by clear and convincing evidence
that Dr. Johnson was the first to invent [the specific
claim] and did not abandon, suppress or conceal
that invention?
Id., Jury Verdict form, Dkt. No. 315. The jury answered
“No” with respect to each claim. The jury verdicts were
rendered on October 28, 2009, and judgment was entered on
October 29, 2009.
Concurrently with the infringement litigation, priority
of invention was being contested in an “interference” pro-
ceeding in the U.S. Patent and Trademark Office (“PTO”).
The interference was “declared” on March 21, 2007 and
involved five Ryan and Scholl patents (including the three
patents in the infringement suit), having an earliest filing

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date of August 20, 1999, and a patent application of Johnson
having an earliest filing date of October 18, 1999. The
district court denied R&D’s motion to stay the infringement
suit pending completion of the PTO interference, stating
that “Streck has presented evidence of continued alleged
infringement that would require injunctive relief that can
only be obtained in this court.”
On November 2, 2009, the PTO Board of Patent Appeals
and Interferences (“the Board”) issued its decision, award-
ing priority to the junior party Johnson. Johnson v. Ryan,
Interference No. 105,522 (B.P.A.I. Nov. 2, 2009). Streck
then filed a §146 action in the Nebraska district court,
where the case was assigned to the same district judge who
had tried the infringement case. The district court duly
awarded priority in favor of the Streck inventors Ryan and
Scholl. R&D timely appealed, concurrently with its appeal
of the adverse judgment in the infringement suit. The
appeals were heard on the same day, and the parties sug-
gested that this court first consider the priority issue pre-
sented in the §146 action. The parties agreed that, if this
court affirms the district court’s decision in the §146 action
– including the burden of proof and standard of review
employed therein – that conclusion could affect the in-
fringement appeal. This court today decides Appeal No.
2011-1045, the priority issue subject of the §146 action. The
decision in Streck, Inc. v. Research & Diagnostic Systems,
Inc., Appeal No. 2011-1044, will follow.
THE §146 ACTION
A §146 action requires that there first have been an in-
terference proceeding in the PTO. The losing party may
either appeal directly to the Federal Circuit on the PTO
record, in accordance with 35 U.S.C. §141; or may obtain a

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“remedy by civil action” in district court as provided by 35
U.S.C. §146, followed by appeal to the Federal Circuit.
A. District Court Procedure
Streck filed a civil action under §146, and the parties
and the district court agreed that the issue of priority would
be decided on the evidentiary record relevant to priority as
adduced in the infringement trial, together with the record
in the PTO interference proceeding. Section 146 provides
for admission of the PTO record in the district court:
In such suits the record in the Patent and Trade-
mark Office shall be admitted on motion of either
party upon the terms and conditions as to costs, ex-
penses, and the further cross-examination of the
witnesses as the court imposes, without prejudice to
the right of the parties to take further testimony.
The testimony and exhibits of the record in the Pat-
ent and Trademark Office when admitted shall have
the same effect as if originally taken and produced
in the suit.
The PTO record was duly admitted. The district court
stated that “[t]he record now before the court includes live
testimony, evidence that was not presented to the Board,
and evidence that conflicts with that provided to the Board.
Over fifty exhibits were admitted in the infringement trial
that were not considered by the Board in the Interference
Action.” Streck, 744 F. Supp. 2d at 972 (footnote omitted).
The district court stated that its obligation was to find
the facts of priority de novo, on the entirety of the evidence
at trial and in the PTO record. Id. at 982. R&D had ob-
jected to this procedure, and argues that the district court
erred in employing it. R&D states that the district court in

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a §146 proceeding must accept the findings of the Board if
those findings were supported by substantial evidence in the
PTO record. R&D states that it was procedurally incorrect
for the district court to make de novo findings on issues on
which the PTO’s findings were supported by substantial
evidence in the record before the PTO. Thus R&D argues
that the district court should have reviewed each of the
Board’s factual findings in the interference to determine if
the finding was supported by substantial evidence and, if so,
the district court should have accepted and applied the
Board’s finding, refusing to accept new evidence on any such
finding or to otherwise reconsider it.
The district court rejected R&D’s theory of the role of
the district court under §146. The district court cited Win-
ner International Royalty Corporation v. Wang, 202 F.3d
1340 (Fed. Cir. 2000), where this court held that “the ad-
mission of live testimony on all matters before the Board in
a section 146 action, as in this case, makes a factfinder of
the district court and requires a de novo trial.” 202 F.3d at
1347. The Federal Circuit held that the district court must
find the facts de novo, even if “the live testimony before the
district court might be of the same or similar to testimony
before the Board in the form of affidavits and deposition
transcripts.” Id. The court stated that “our holding also
establishes a clear rule that live testimony admitted on all
matters that were before the Board triggers a de novo trial.”
Id. at 1347-48.
Section 146 provides that the civil action is “without
prejudice to the right of the parties to take further testi-
mony.” In Agilent Technologies, Inc. v. Affymetrix, Inc., 567
F.3d 1366 (Fed. Cir. 2009) the court explained that
“[s]ection 146 affords a litigant the option of shoring up
evidentiary gaps.” 567 F.3d at 1380; see also Koninklijke
Philips Elecs. N.V. v. Cardiac Sci. Operating Co., 590 F.3d

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1326, 1332 (Fed. Cir. 2010) (Ҥ146 grants parties the right to
present new testimony . . . .”).
This court thus recognized that the opportunity to re-
ceive additional evidence, as well as to hear and see wit-
nesses at trial, can facilitate findings having depth beyond
that available on review of a cold record. See Winner, 202
F.3d at 1347 (“[B]ecause the district court may observe
witnesses under examination and cross-examination it can
have a ‘powerful advantage’ over the Board which can never
receive testimony in such a manner.” (quoting Burlington
Indus., Inc. v. Quigg, 822 F.2d 1581, 1582 (Fed. Cir. 1987));
cf. Hyatt v. Kappos, 625 F.3d 1320, 1331 (Fed. Cir. 2010) (en
banc), cert. granted, 131 S. Ct. 3064 (2011) (“Congress
intended that applicants would be free to introduce new
evidence in §145 proceedings subject only to the rules appli-
cable to all civil actions, the Federal Rules of Evidence and
the Federal Rules of Civil Procedure.”).2
R&D also argues that, assuming some new evidence
may be considered, it is only when the evidence adduced in
the district court is in conflict with the evidence before the
Board that the district court may make de novo findings as
to the facts to which that evidence relates. Neither statute
nor precedent supports such a distinction, whose impracti-
cality was explored in Winner:
[I]f the test for determining whether de novo adjudi-
cation is appropriate were based on exactly what
the witness said in the district court and whether it
was truly ‘new or different’ than what was disclosed
in affidavits and deposition transcripts of the same
2 In Hyatt the court recognized that sections 145 and
146 are “parallel provisions” that are “to be treated simi-
larly.” 625 F.3d at 1330 n.2 (citing Winner, 202 F.3d at
1345).

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or other witnesses before the Board, then the dis-
trict court, and this court on appeal, would be re-
quired to search nearly line-by-line through the
respective records as to each witness and issue to
determine which standard applied. Aside from be-
ing difficult, such a test would provide scant guid-
ance for a prospective litigant attempting to discern
which standard would apply should it file a section
146 action.
202 F.3d at 1348; cf. Hyatt, 625 F.3d at 1336 (“Because the
court must determine the weight and import of this new
evidence, we have held that the district court in a §145
action must make de novo fact findings with respect to
factual issues to which the new evidence relates.”).
R&D argues that “Winner is not controlling,” and that
this court’s acceptance of the de novo §146 standard was
modified in Agilent. However, the court in Agilent did not
hold that the district court cannot make its own factual
findings unless the evidence in the district court conflicts
with the PTO record. To the contrary, in Agilent the court
held that “[t]he district court’s decision to deferentially
review the Board’s written description holding in the face of
newly submitted conflicting evidence constituted legal
error.” 567 F.3d at 1380. The standard for trial and deci-
sion of a §146 action in the district court is not the same as
the standard for review by the Federal Circuit in a §141
direct appeal from the PTO on the Board record. See Dick-
inson v. Zurko, 527 U.S. 150, 152 (1999) (on direct appeal,
the Federal Circuit applies the standard of review estab-
lished by the Administrative Procedure Act).
The circumstances of this case highlight the importance
of interpreting §146 as we have to date and continue to do
here. The Board premised its factual findings on the sworn

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statements and documents submitted to it. The statements
did not allow for live credibility assessments, however, and
the documents submitted to the Board were highly redacted.
As discussed below, the district court expressly found, upon
examination of the unredacted documents and with the
benefit of live testimony from the declarants, that many of
the representations upon which the Board relied were not
accurate or credible. In other words, the nature of the
administrative proceeding limited the scope of the Board’s
inquiry and potentially the accuracy of its fact finding.
Section 146 recognizes that, while the Board is fully capable
of assessing all matters presented to it, there are inherent
limits to its fact finding function that arise from the sterile
nature of a proceeding that is limited to documentary and
declaration or deposition evidence.
In accordance with statute and precedent, the district
court appropriately considered additional evidence and
conducted a de novo determination of the issue of priority
under §146.
B. Burden of Proof
R&D also argues that the district court misplaced the
burden of proof, and that the burden of proof should have
been placed on Streck in the §146 action because Streck lost
in the PTO. R&D points out that the appellant routinely
bears the burden of proof on appeal.
Streck responds that the district court correctly pre-
served the relationship in priority contests, where the party
with the later patent application filing date, that is, the
junior party, bears the burden of overcoming the filing date
of the earlier entrant into the patenting process. Streck
states that since the §146 action is a de novo proceeding, not

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an appeal from an adverse decision, the junior party still
has that burden.
Placement of the burdens in interactive litigation is not
simple. As the Court noted in Microsoft Corp. v. i4i Limited
Partnership, 131 S. Ct. 2238 (2011), “[h]istorically, the term
[burden of proof] has encompassed two separate burdens:
the ‘burden of persuasion’ (specifying which party loses if
the evidence is balanced), as well as the ‘burden of produc-
tion’ (specifying which party must come forward with evi-
dence at various stages in the litigation).” 131 S. Ct. at
2245 n.4. Because, as discussed above, a §146 action is a
new civil proceeding subject to de novo determination, the
district court properly placed the burden of persuasion on
R&D.
C. Standard of Proof
In the PTO the Board applied the standard of proof of
priority by a preponderance of the evidence, because the
Johnson and the Ryan applications were initially copending
in the PTO. See Bosies v. Benedict, 27 F.3d 539, 541-42
(Fed. Cir. 1994) (for copending applications, priority is
determined by a preponderance of the evidence). The dis-
trict court adopted the same standard for the §146 proceed-
ing, and recognized that in the infringement litigation the
jury had been instructed that invalidity must be proved by
clear and convincing evidence. The district court stated that
for the §146 action “[t]he court will independently review
those facts presented at trial and in the interference pro-
ceeding and will apply the preponderance of evidence stan-
dard in analyzing those facts.” Streck, 744 F. Supp. 2d at
982 n.7. We agree that the standard of proof in this §146
proceeding was by a preponderance of the evidence and was,
as the parties note, a lesser burden than was imposed on
R&D in the infringement proceeding, where invalidity based

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on R&D’s asserted prior invention was required to be proved
by clear and convincing evidence.
PRIORITY OF INVENTION
The primary legal criteria of patent-focused invention
are “conception” and “reduction to practice,” with some
additional attributes applicable to various factual situa-
tions. Determination of priority as between competing
inventors is guided by rules that have arisen from the
activities of technology-based creativity. In priority dis-
putes, including disputes under §146, the questions of
conception and reduction to practice are deemed to be
matters of law, founded on facts. The district court’s deter-
mination of priority in a §146 action is reviewed de novo on
appeal, and the court’s factual findings supporting its legal
conclusions are reviewed for clear error. Rolls-Royce, PLC v.
United Techs. Corp., 603 F.3d 1325, 1330 (Fed. Cir. 2010);
see DSL Dynamic Scis. Ltd. v. Union Switch & Signal Inc.,
928 F.2d 1122, 1125 (Fed. Cir. 1991).
On this appeal, R&D directs our attention to the PTO’s
findings and conclusions that favor R&D. The district
court’s opinion explains why it made findings and reached a
conclusion that differed from that of the PTO, citing the new
evidence that was adduced in the district court proceeding,
and various conflicts with the evidence presented to the
PTO. We discern no error in the district court’s findings
and conclusions, as we next discuss.
A. The Technology
Hematology instruments, such as are used to analyze
samples of blood, measure the different types of blood cells
in the sample. Government regulations, and sound practice,
require that these instruments be regularly checked for

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accuracy. This checking for accuracy is achieved through
the use of “controls” of known blood composition, that verify
whether an instrument is accurately reading the blood
sample. Such controls are made from chemically stabilized
blood cells, or analogs thereof that simulate or mimic the
relevant characteristics of blood cells. Laboratories, hospi-
tals, clinics, and doctor’s offices use such controls to test
whether the hematology instrument is working accurately,
by running the control through the instrument and compar-
ing the instrument’s analysis of the control with the assay
sheet provided by the manufacturer of the control. Both
Streck and R&D are in the business of providing such
controls.
The invention at issue is an “integrated reticulocyte con-
trol,” which contains at least a reticulocyte component3
combined with a white blood cell component capable of
identifying the five types of white blood cells: lymphocytes,
monocytes, neutrophils, eosinophils, and basophils. Al-
though not an issue, the parties point out that such a con-
trol typically also contains a mature red blood cell
component and a platelet component, and some claims so
state. In the district court the priority determination was
focused on the following interference count as developed in
the PTO proceeding:
A hematology control composition comprising:
a) a stabilized reticulocyte component; and
3 The district court defined “reticulocyte” as “imma-
ture anucleate red blood cells containing some ribonucleic
acid.” Streck, Inc. v. Research Diagnostic Sys., Inc., No.
8:06-cv-458, 2008 WL 4891132, at *11 (D. Neb. Nov. 12,
2008).

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b) a fixed and stabilized white blood cell com-
ponent capable of exhibiting a five-part differ-
ential.
The count was claim 1 of Ryan’s ’668 patent and claim 46 of
the Johnson application.
B. Conception
Before 1996, hematology instruments measured reticu-
locytes and white blood cells separately, in order to avoid
error in counting or classifying due to interference between
the various blood components. The instruments required
separate blood samples for the separate measurements, and
separate controls were required to check the accuracy of the
instrument. Both Streck and R&D knew that instrument
makers were attempting to develop an integrated hematol-
ogy analyzer that could concurrently measure reticulocytes
and the five types of white blood cells in the same blood
sample. No control existed for such an instrument. It was
understood that eliminating interference among the various
components of the blood would be critical for such analysis,
and essential for the control to determine whether the
instrument was accurately classifying and counting the
various blood components.
The controls that then existed were limited each to a
specific blood component, as were the instruments they
controlled. The district court found that Dr. Ryan in late
1993 conducted experiments and successfully determined
that it was feasible to create a control that would measure
reticulocytes without interference from the white blood cells
that were concurrently measured. In the district court, both
Streck’s and R&D’s expert witnesses testified that Ryan’s
November-December 1993 work was a conception of the
subject matter of the interference count, although R&D’s

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expert had presented a contrary opinion by declaration in
the PTO.
The district court found that Ryan was the first to con-
ceive of the subject matter of the count. R&D does not
challenge that ruling on this appeal.
C. Reduction to Practice
The district court found and R&D agrees that Ryan re-
duced to practice the subject matter of the count beginning
in 1997 and continuing into 1998 and 1999. R&D argued
that Dr. Johnson, although second to conceive, had reduced
the invention to practice before the Ryan filing date and
before Dr. Ryan’s actual reduction to practice. R&D also
argued that Ryan had not shown diligence from his date of
conception to his actual or constructive reduction to prac-
tice.
To establish an actual reduction to practice, it is neces-
sary to show that the claimant had possession of the subject
matter of the count and that it was shown or known to work
for its intended purpose. Mycogen Plant Sci., Inc. v Mon-
santo Co., 243 F.3d 1316, 1332 (Fed. Cir. 2001). When
testing is needed to establish that an invention worked for
its intended purpose, the inventor must have recognized
that the tests were successful. Estee Lauder Inc. v. L’Oreal,
S.A., 129 F.3d 588, 594-95 (Fed. Cir. 1997). The parties do
not dispute that experimental testing was needed here to
establish actual reduction to practice.
Witnesses explained that for the control to work for its
intended purpose, the control must test whether the in-
strument is accurately measuring the separate components
of the blood. The expert witnesses agreed that the control
must correctly test the accuracy of the hemotology instru-

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ment, and that the control must be sufficiently stable over
an extended period of time. The district court found that
the intended purpose was to provide an integrated control
that would be free of inaccuracy due to interference from
reticulocytes, and thus that determination of whether such
interference between blood components occurred was re-
quired for reduction to practice.
R&D’s position is that Dr. Johnson reduced the inven-
tion to practice in July 1996. R&D asserts that Johnson
prepared sample controls that combined existing white
blood cell and recticulocyte controls in 1996, and that two
such experiments were reductions to practice of the inter-
ference count. Dr. Johnson testified that the samples called
Control 1 and Control 2 contained a reticulocyte component
and a white blood cell component, and that an assistant ran
these samples, along with some unrelated samples, on a
prototype of the Abbott Cell-Dyn 4000 instrument, a pro-
posed new Abbott instrument that was intended to have the
capability of integrated analysis.
On reviewing the evidence, the district court found that
Dr. Johnson’s 1996 experiments were directed to determin-
ing the stability of the combination of components, not the
correctness of the count. R&D does not dispute this finding,
but argues that testing of stability sufficed to meet the
interference count. R&D states that the district court
applied the wrong legal standard for determining when a
composition works for its intended purpose, and that it
suffices that Johnson used his 1996 controls on a prototype
of an integrated hematology analyzer.
The district court found, referring to the expert testi-
mony, that “the difficulty in developing an integrated con-
trol was the tendency for the hematology instrument to
recognize the reticulocyte analogs incorrectly and count

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them as white blood cells, resulting in an inaccurate result.”
Streck, 744 F. Supp. 2d at 985. The court found that the
purpose of the invention was to provide an integrated con-
trol that would be free of inaccuracy due to interference
among various blood components, and that therefore
whether the control accurately measured the components
without interference was required in order to know whether
the control would work for its intended purpose. “Proof of
actual reduction to practice requires more than theoretical
capability . . . .” Newkirk v. Lulejian, 825 F.2d 1581, 1583
(Fed. Cir. 1987). The district court was correct in holding
that for actual reduction to practice the control must have
been shown to be effective for its control purpose: that is,
determining the accuracy of the instrument.
The court also found R&D’s evidence deficient, stating
that it “consists mainly of the uncorroborated testimony of
the inventor, Dr. Johnson, that he created a composition
and it worked,” and that there was “no evidence of precisely
what went into the compositions that Dr. Johnson later
deemed successful.” Streck, 744 F. Supp. 2d at 985 (“The
court was not provided with evidence of the components of
either the commercial or prototype compositions that were
mixed with recticulocytes in the Johnson Controls 1-4
experiments.”). The court found that the evidence “relates
more to the issue of the stability of the composition over
time and not to the issue of accuracy of an instrument’s
measurements in light of potential interference between the
various components in the control composition.” Id. at 984-
85.
Referring to the evidence of later work done at R&D,
where controls were developed for integrated analysis and
were routinely tested for interference among blood compo-
nents, the court stated that “[t]here is no evidence that Dr.
Johnson evaluated this sort of evidence in connection with

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the experiments he ran in 1996.” Id. at 985. The district
court deemed it “[e]qually significant, if he did not use
scattergrams throughout his [1996] experiment, he did not
retain sufficient documentation to corroborate his alleged
invention.” Id. The court explained that “[s]cattergrams are
visual representations of the positioning of cell populations
by type, according to an instrument’s mathematical algo-
rithms (or software). The positioning is generally deter-
mined by cell size, shape, and the amount of light it
scatters.” Id. at 977. In the infringement trial, the experts
for both sides agreed that such analysis is necessary in
designing and developing integrated controls. Although
R&D argues on this appeal that the district court placed too
much weight on scattergram analysis, the record contains
no evidence of determination by R&D, by any method, of
whether the 1996 samples were effective in avoiding inter-
ference among blood components.
R&D also argues that analysis of efficacy, by scatter-
gram or any method, is not required for reduction to prac-
tice, for the interference count does not include analysis of
efficacy. The district court found that the count relates to
“controls,” which requires effectiveness as a control. Id. at
976 (“A control composition that ‘worked’ would be one that
lacked interference, with cells properly positioned, that was
stable over time.”). The intended purpose need not be
explicitly included in the count of the interference, DSL
Dynamic, 928 F.2d at 1125 (citing Elmore v. Schmitt, 278
F.2d 510 (CCPA 1960)), but establishing an actual reduction
to practice requires demonstration that the invention
worked for its intended purpose. The district court observed
that the compositions that were said to have been tested in
1996 were mentioned in a later document of Dr. Johnson as
producing negative results, and were avoided when he later
designed an integrated control.

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The sufficiency of testing to show an invention works for
its intended purpose is a factual issue. z4 Techs., Inc. v.
Microsoft Corp., 507 F.3d 1340, 1352 (Fed. Cir. 2007); see
also Scott v. Finney, 34 F.3d 1058, 1063 (Fed. Cir. 1994)
(courts must “examine[] the record to discern whether the
testing in fact demonstrated a solution to the problem
intended to be solved by the invention”). The district court
made findings, including findings of credibility and weight,
and applied the law to the found facts. The district court’s
findings of fact have not been shown to be clearly erroneous,
and the court stated and applied the correct law of reduction
to practice. The court correctly held that R&D did not
establish an actual reduction to practice in its 1996 experi-
ments. R&D proffered no other evidence purporting to show
reduction to practice before Streck’s actual reduction to
practice.
The district court also discussed Streck’s evidence of ac-
tual reduction to practice. R&D’s expert Dr. Simson testi-
fied in the district court that Streck’s experiments were a
successful reduction to practice, stating “Dr. Ryan had
demonstrated previously, as we heard in this trial, controls
that would work for their intended purpose sometime in late
1997.” Streck, 744 F. Supp. 2d at 981 (quoting T. Tr. (Vol.
VII) at 1386). As R&D does not challenge Streck’s actual
reduction to practice on this appeal, we do not review the
district court’s analysis of Streck’s evidence. And in view of
our affirmance of the district court’s ruling that R&D had
not established an actual reduction to practice before
Streck’s actual reduction to practice, we need not reach the
rulings on diligence and abandonment, id. at 986 n.11,
which the district court made for the sake of completeness.

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CONCLUSION
On this appeal, R&D’s principal argument is not that
the district court erred on the entirety of the evidence, but
that the Board’s findings should prevail if they were sup-
ported by substantial evidence before the Board, and there-
fore that the district court’s de novo procedure was
incorrect. However, as we have observed, §146 establishes
de novo review. The purpose of §146 is to bring to bear,
upon the contested issues of priority of invention, the proce-
dures and rules of federal litigation. The statutory alterna-
tive of a civil action in the district court following the
decision of the PTO tribunal implements the purpose
whereby judicial process is the final arbiter of the rights and
issues administratively assigned to the PTO. On the en-
tirety of the evidence, the district court’s findings and
conclusion that R&D did not establish a reduction to prac-
tice with Johnson’s 1996 experiments is affirmed. The court
correctly awarded priority of invention to Ryan and Streck.
AFFIRMED

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