Griffith v. Kanamaru
816 F.2d 624 (1987)
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Rule of Law:
An inventor's delay in reducing an invention to practice is not excused by a university's policy requiring outside funding or by the convenience of waiting for a specific graduate student to become available. Such delays, being commercial or administrative in nature, do not constitute the "reasonable diligence" required by 35 U.S.C. § 102(g) to establish priority over an intervening inventor.
Facts:
- Dr. Owen W. Griffith, a professor at Cornell University, conceived of an aminocarnitine compound by June 30, 1981.
- On November 17, 1982, Tsuneo Kanamaru filed a U.S. patent application for the same invention.
- Griffith was inactive on the project for a three-month period from June 15, 1983, to September 13, 1983.
- The inactivity was due to Cornell's institutional policy that required Griffith to seek outside research funding.
- Griffith also delayed the project by waiting for a graduate student, Debora Jenkins, to matriculate and assist with the work in the fall semester.
- During the period between Kanamaru's filing and his own reduction to practice, Griffith also prioritized and worked on other, unrelated research projects.
- Griffith ultimately reduced his invention to practice on January 11, 1984.
Procedural Posture:
- A patent interference proceeding (No. 101,562) was initiated before the Board of Patent Appeals and Interferences (the board) to determine priority of invention between Griffith and Kanamaru.
- The board determined that Griffith was first to conceive the invention but last to reduce it to practice.
- The board issued an order for Griffith to show cause why summary judgment should not be entered against him for failure to demonstrate reasonable diligence during the critical period.
- After reviewing Griffith's evidence and arguments, the board entered summary judgment against Griffith, finding he failed to establish a prima facie case for priority.
- Griffith, the appellant, appealed the board's decision to the U.S. Court of Appeals for the Federal Circuit.
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Issue:
Does a university researcher's inactivity on an invention, caused by the university's policy to seek outside funding and a decision to wait for a particular graduate student, constitute "reasonable diligence" under 35 U.S.C. § 102(g) to overcome a rival inventor's earlier filing date?
Opinions:
Majority - Nichols, J.
No. A university researcher's inactivity caused by internal funding policies or the convenience of waiting for a student does not constitute reasonable diligence. The court reasoned that the public policy underlying the patent system's diligence requirement is to encourage the earliest possible public disclosure of innovations. Precedent allows for excuses based on reasonable everyday problems faced by an inventor, such as personal hardship or technical hurdles, but not for delays related to commercial development. The court analogized Cornell's choice to seek outside funding to an inventor's efforts to raise capital, which has been held insufficient to excuse a lack of diligence. Waiting for a particular student was a matter of convenience, not necessity, as there was no evidence of a personnel shortage or that the student was uniquely qualified. By adopting these policies and making these choices, Cornell consciously assumed the risk of losing patent priority.
Analysis:
This decision clarifies that the "reasonable diligence" standard in patent law does not have a special exception for the unique operating environment of academic research institutions. It establishes that institutional policies related to funding and staffing are treated as business or commercial decisions, which are not legally sufficient excuses for delays in reducing an invention to practice. The ruling reinforces the primacy of the public interest in early disclosure over an inventor's or institution's administrative or financial convenience. This precedent signals to universities that they must align their patenting strategies with the diligence requirements of patent law or risk forfeiting inventions to faster-moving competitors.
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