Griffith v. Kanamaru

• Decision Date: 08 April 1987
• Docket Number: No. 87-1042,87-1042
• Citation: 2 USPQ2d 1361,816 F.2d 624
• Parties: , 38 Ed. Law Rep. 1216, 2 U.S.P.Q.2d 1361 Owen W. GRIFFITH, Appellant, v. Tsuneo KANAMARU, Susumu Shinagawa, and Mitsuko Asai, Appellees. Appeal
• Court: U.S. Court of Appeals — Federal Circuit

Page 624

816 F.2d 624

55 USLW 2599, 38 Ed. Law Rep. 1216, 2

U.S.P.Q.2d 1361

Owen W. GRIFFITH, Appellant, v. Tsuneo KANAMARU, Susumu Shinagawa, and Mitsuko Asai, Appellees.

Appeal No. 87-1042.

United States Court of Appeals, Federal Circuit.

April 8, 1987.

Eric S. Spector of Jones, Tullar & Cooper, P.C., Arlington, Va., argued for appellant.

Harold C. Wegner of Wegner & Bretschneider, Washington, D.C., argued for appellees. With him on brief was Helmuth A. Wegner, of Wegner & Bretschneider, Washington, D.C.; Barry E. Bretschneider and Herbert I. Cantor, of counsel.

Before BISSELL, Circuit Judge, NICHOLS, Senior Circuit Judge, and ARCHER, Circuit Judge.

NICHOLS, Senior Circuit Judge.

Owen W. Griffith (Griffith) appeals the decision of the Board of Patent Appeals and Interferences (board) (Patent Interference No. 101,562) that Griffith failed to establish a prima facie case that he is entitled to an award of priority against the filing date of Tsuneo Kanamaru, et al. (Kanamaru) for a patent on aminocarnitine compounds. We affirm.

Background

This patent interference case involves the application of Griffith, an Associate Professor in the Department of Biochemistry at Cornell University Medical College, for a patent on an aminocarnitine compound, useful in the treatment of diabetes, and a patent issued for the same invention to Kanamaru, an employee of Takeda Chemical Industries. The inventors assigned their rights to the inventions to the Cornell Research Foundation, Inc. (Cornell) and to Takeda Chemical Industries respectively. The technology established by this invention is not at issue in this appeal and is therefore not described further.

Griffith had established conception by June 30, 1981, and reduction to practice on January 11, 1984. Kanamaru filed for a United States patent on November 17, 1982. The board found, however, that Griffith failed to establish reasonable diligence for a prima facie case of prior invention and issued an order to show cause under 37 C.F.R. Sec. 1.617 as to why summary judgment should not be issued.

The board considered the additional evidence submitted by Griffith pursuant to the show cause order and decided that Griffith failed to establish a prima facie case for priority against Kanamaru's filing date. This result was based on the board's conclusion that Griffith's explanation for inactivity between June 15, 1983, and September 13, 1983, failed to provide a legally sufficient excuse to satisfy the "reasonable diligence" requirement of 35 U.S.C. Sec. 102(g). Griffith appeals on the issue of reasonable diligence.

Analysis

I

This is a case of first impression and presents the novel circumstances of a university suggesting that it is reasonable for the public to wait for disclosure until the most satisfactory funding arrangements are made. The applicable law is the "reasonable diligence" standard contained in 35 U.S.C. Sec. 102(g) and we must determine the appropriate role of the courts in construing this exception to the ordinary first-in-time rule. The statute states as follows:

A person shall be entitled to a patent unless--

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* * *

(g) before the applicant's invention thereof the invention was made in this country by another who had not abandoned, suppressed, or concealed it. In determining priority of invention there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.

5 U.S.C. Sec. 102(g).

Griffith must establish a prima facie case of reasonable diligence, as well as dates of conception and reduction to practice, to avoid summary judgment on the issue of priority. 37 C.F.R. Sec. 1.617(a). As a preliminary matter we note that, although the board focused on the June 1983 to September 1983 lapse in work, and Griffith's reasons for this lapse, Griffith is burdened with establishing a prima facie case of reasonable diligence from immediately before Kanamaru's filing date of November 17, 1982, until Griffith's reduction to practice on January 11, 1984. 35 U.S.C. Sec. 102(g); 37 C.F.R. Sec. 1.617(a).

On appeal, Griffith presents two grounds intended to justify his inactivity on the aminocarnitine project between June 15, 1983, and September 13, 1983. The first is that, notwithstanding Cornell University's extraordinary endowment, it is reasonable, and as a policy matter desirable, for Cornell to require Griffith and other research scientists to obtain funding from outside the university. The second reason Griffith presents is that he reasonably waited for Ms. Debora Jenkins to matriculate in the Fall of 1983 to assist with the project. He had promised her she should have that task which she needed to qualify for her degree. We reject these arguments and conclude that Griffith has failed to establish grounds to excuse his inactivity prior to reduction to practice.

II

The reasonable diligence standard balances the interest in rewarding and encouraging invention with the public's interest in the earliest possible disclosure of innovation. 6 C. Gholz, I. Kayton, D. Conlin & R. Schwaab, Patent Practice 24-9 (1985) citing Hull v. Davenport, 90 F.2d 103, 105, 24 CCPA 1194, 1196, 33 USPQ 506, 508 (1937). Griffith must account for the entire period from just before Kanamaru's filing date until his reduction to practice. 3 D. Chisum, Patents Sec. 10.07 at 10-120 (1986). As one of our predecessor courts has noted:

Public policy favors the early disclosure of inventions. This underlies the requirement for "reasonable diligence" in reducing an invention to practice, not unlike the requirement that, to avoid a holding of suppression or concealment, there be no unreasonable delay in filing an application once there has been a reduction to practice.

Naber v. Cricchi, 567 F.2d 382, 385 n. 5, 196 USPQ 294, 297 n. 5 (CCPA 1977), cert. denied, 439 U.S. 826, 99 S.Ct. 98, 58 L.Ed.2d 119 (1978) (citation omitted).

The board in this case was, but not properly, asked to pass judgment on the reasonableness of Cornell's policy regarding outside funding of research. The correct inquiry is rather whether it is reasonable for Cornell to require the public to wait for the innovation, given the well settled policy in favor of early disclosure. As the board notes, Chief Judge Markey has called early public disclosure the "linchpin of the patent system." Horwath v. Lee, 564 F.2d 948, 950, 195 USPQ 701, 703 (CCPA 1977). A review of caselaw on excuses for inactivity in reduction to practice reveals a common thread that courts may consider the reasonable everyday problems and limitations encountered by an inventor. See, e.g., Bey v. Kollonitsch, 806 F.2d 1024, 231 USPQ 967 (Fed.Cir.1986) (delay in filing excused where attorney worked on a group of related applications and other applications contributed substantially to the preparation of Bey's application); Reed v. Tornqvist, 436 F.2d 501, 168 USPQ 462 (CCPA 1971) (concluding it is not unreasonable for inventor to delay completing a patent application until after returning from a three week vacation in Sweden, extended by illness of inventor's father); Keizer v. Bradley, 270 F.2d 396, 47 CCPA 709, 123 USPQ 215 (1959) (delay excused where inventor, after producing a component for a color television, delayed filing to produce an appropriate receiver for testing the component); Courson v. O'Connor, 227 F. 890, 894 (7th Cir.1915) ("exercise of reasonable diligence * * * does not require an inventor to devote his entire time thereto, or to abandon his ordinary means of livelihood"); De Wallace v. Scott, 15 App.D.C. 157 (1899) (where applicant made bona fide attempts to perfect his invention, applicant's poor health, responsibility to feed his family, and daily job demands excused his delay in reducing his invention to practice); Texas Co. v. Globe Oil & Refining Co., 112 F.Supp. 455, 98 USPQ 312 (N.D.Ill.1953) (delay in filing application excused because of confusion relating to war).

Griffith argues that the admitted inactivity of three months between June 15, 1983, and September 13, 1983, which he attributes to Cornell's "reasonable" policy requiring outside funding and to Griffith's "reasonable" decision to delay until a graduate student arrived, falls within legal precedent excusing inactivity in the diligence context. We disagree. We first note that, in regard to waiting for a graduate student, Griffith does not even suggest that he faced a genuine shortage of personnel. He does not suggest that Ms. Jenkins was the only person capable of carrying on with the aminocarnitine experiment. We can see no application of precedent to suggest that the convenience of the timing of the semester schedule justifies a three-month delay for the purpose of reasonable diligence. Neither do we believe that this excuse, absent even a suggestion by Griffith that Jenkins was uniquely qualified to do his research, is reasonable.

Griffith's second contention that it was reasonable for Cornell to require outside funding, therefore causing a delay in order to apply...