Brief Fact Summary. Griffith (Plaintiff) claimed to have priority over Kanamaru’s (Defendant) patent application, but the Board found that he had failed to establish reasonable diligence in completing the reduction to practice of the invention.
Synopsis of Rule of Law. Courts may consider the reasonable everyday problems and limitations an inventor may encounter when evaluating excuses for inactivity in reduction to practice.
The exercise of reasonable diligence in preparing and filing his application does not require an inventor to devote his entire time thereto, or to abandon his ordinary means of livelihood.View Full Point of Law
Issue. May courts consider the reasonable everyday problems and limitations an inventor may encounter when evaluating excuses for inactivity in reduction to practice?
Held. (Nichols, J.) Yes. Courts may consider the reasonable everyday problems and limitations an inventor may encounter when evaluating excuses for inactivity in reduction to practice. Griffith’s (Plaintiff) excuse, however, sounded more in the nature of commercial development, which is not accepted as an excuse for delay, than in the nature of a â€œhardshipâ€ case. Delays in reduction to practice caused by an inventor’s efforts to refine an invention to the most marketable and profitable state are not sufficient causes for inactivity. Plaintiff was burdened with establishing a prima facie case of reasonable diligence from immediately prior to Kanamaru’s (Defendant) filing date until Plaintiff’s reduction to practice. Waiting for outside funding or for the new semester to begin are not sufficient reasons for delay. It seems evident that Cornell consciously chose to assume the risk that priority in the invention might be lost to an outside inventor. Griffith (Plaintiff) failed to establish a prima facie case of reasonable diligence or a legally sufficient excuse for inactivity to establish priority over Kanamaru (Defendant). Affirmed.
Note that the Board relied exclusively on Kanamaru’s (Defendant) filing date as the date that the Japanese inventor conceived and reduced his invention to practice. That is because this case was decided in 1987 and, at that time, foreign inventors could not introduce evidence of foreign conception and reduction to practice. In 1994, as part of the legislative package implementing the Trade Related Aspects of Intellectual Property (TRIPs) portion of the Uruguay Round negotiations, Congress changed 35 U.S.C. Â§ 104 to permit such evidence. The Patent Office formerly collapsed the whole order of events leading to the foreign invention into the single date of the patent filing.