Interference No. 104,745
inventor's time was not given to their preparation or work in connection therewith, but this was
not necessary")). Furthermore, although Mr. Walls conceded that he was capable of replacing
the plasma cartridge, power cable, and junction box, Walls Depo., LR 541, ll. 1-11, it was not
unreasonable to defer to Laser Science's experience in repairing their own lasers. Also,
disassembling one of the mass spectrometers in order to obtain a laser was not a reasonable
course of action in view of the obvious risk of damage to the mass spectrometers. Baldwin
Decl. (LX 1074) ¶ 40 Baldwin Depo., LR 251, ll.5-16. As a result, this is not a case where a
party's decision not to use an available resource to achieve an actual reduction to practice was
chiefly motivated by the desire to use the resource on a project having a higher priority. Cf.
Griffith, 816 F.2d at 629, 2 USPQ2d at 1364 (Fed. Cir. 1986)(holding of nondiligence based in
part on fact that "the aminocarnitine project was second and often third priority in laboratory
research as well as the solicitation of funds"); Hudson v. Giuffrida, 328 F.2d 918, 923,
140 USPQ 569, 573 (CCPA 1964) (delay in testing invention was inconsistent with reasonable
diligence because it was "a 'deliberate delay' motivated primarily by Dr. Janes' desire not to
interfere with equipment then in use on other projects").
Bai also argues (BOppBr 57-58) that in addition to the lasers contained in the mass
spectrometers, Dr. Burlingame's laboratory had other operative lasers being used on other
projects which could have been used instead in Laiko's AP-MALDI project, citing Dr.
Burlingame's testimony that other lasers were made available to "Talrose" and "Fred," who were
mentioned in Baldwin's 23 December e-mail along with Dr. Laiko as prospective users of the
broken nitrogen laser, should it be repaired. Burlingame Depo., LR 341, l. 22 to LR 342, l. 16.
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