Law School Case Brief
Griffith v. Kanamaru - 816 F.2d 624 (Fed. Cir. 1987)
In a patent interference case, a later party 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. § 1.617(a), 35 U.S.C. § 102(g).
Owen W. Griffith, an Associate Professor in the Department of Biochemistry at Cornell University Medical College, filed for a patent application on an aminocarnitine compound, useful in the treatment of diabetes. According to the records of the case, Griffith, along with other inventors, assigned their rights to the inventions to the Cornell Research Foundation, Inc. (Cornell) and to Takeda Chemical Industries respectively. Subsequently, a patent for the same invention was issued to Kanamaru, an employee of Takeda Chemical. Kanamaru filed for a United States patent on November 17, 1982. The records of the case revealed that Griffith had established conception by June 30, 1981, and reduction to practice on January 11, 1984. The Board of Patent Appeals and Interferences 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. § 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, (i.e., university's requirement that outside funding sources be sought and to await the availability of a particular student) failed to provide a legally sufficient excuse to satisfy the "reasonable diligence" requirement of 35 U.S.C. § 102(g). Griffith sought review.
Was Griffith’s explanation for inactivity between June 15, 1983 and September 13, 1983 insufficient to satisfy the "reasonable diligence" requirement of 35 U.S.C. § 102(g) for an award of priority?
The United States Court of Appeals for the Federal Circuit noted that this was a case of first impression and presented 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. § 102(g), and the Court had to determine the appropriate role of the courts in construing this exception to the ordinary first-in-time rule. The Court held that waiting for a particular graduate student was not justification to Griffith’s inactivity because there was no showing that there was a shortage of personnel or that that individual was uniquely qualified. Nor was there a showing that Griffith lacked funding, only that the university required him to pursue outside sources of funding. The Court said that this was not a "hardship" case, but rather, it was similar to delay caused by desire to find a more commercially profitable form of development. The Court also found that Griffith had interrupted work on this project to pursue other projects and grant writing. Accordingly, the Court affirmed the decision of The Board of Patent Appeals and Interferences because Griffith failed to establish a prima facie case of "reasonable diligence" to establish grounds for the award of priority as against Kanamaru's filing date.
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