Griffith v. Kanamaru

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.

Facts. Griffith (Plaintiff), a Cornell University professor, applied for a patent on an aminocarnitine compound useful in the treatment of diabetes. He established conception of the invention by June 30, 1981, and a reduction to practice on January 11, 1984. Defendant filed for a U.S. patent on the same compound on November 17, 1982. The Board of Patent Appeals and Interferences decided that Plaintiff had failed to establish a prima facie case that he was entitled to an award of priority against the filing date of Defendant for a patent. Plaintiff claimed that the delay in reduction to practice was justified because he had to secure outside funding for the project as required by Cornell and he was waiting for a particular graduate student to matriculate so she could assist with the project. The Board concluded that Plaintiff’s explanation for his inactivity failed to provide a reason that legally met the “reasonable diligence†requirement of 35 U.S.C. § 102(g). Griffith (Plaintiff) appealed on the issue of reasonable diligence.

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 “hardship†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.

Discussion.

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. § 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.