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Purported inventor who waited eight years to file suit could not overcome presumption of laches
July 17, 2008
In a decision yesterday, the Federal Circuit upheld a district court's grant of summary judgment due to laches and applicable state statute of limitations in an inventorship case. The plaintiff, having waited more than eight years after finding out about the patents to file suit, claimed that an intervening reexamination should have reset the time for determining laches and that the defendant's "unclean hands" in failing to include the plaintiff as an inventor precluded the application of laches. The court held that "there is no rule that the issuance of a reexamination certificate automatically resets the six-year clock for the presumption of laches" and that a plaintiff relying on "unclean hands" to defeat laches must show that "the defendant's misconduct was responsible for the plaintiff's delay in bringing suit."

More detail of Serdarevic v. Adv. Med. Optics, Inc. after the jump.

The case involved a doctor who performed her residency at the same medical center as two physicians/inventors. The doctors collectively were inventors on six patents, which had subsequently been assigned to defendant Advanced Medical Optics. The plaintiff claimed she was the sole inventor of one of the patents and should have been listed as a co-inventor on the other five.

The plaintiff first learned of the patents in 1998 and, through counsel, contacted the assignee in 1999 requesting royalties from the patents. The assignee requested verification of inventorship, which the plaintiff said she would provide. However, the plaintiff never sent the evidence, and had no further contact with the assignee of the patents until she filed suit eight years later in 2006. In the interim, three witnesses who could have testified on inventorship died and one of the patents completed reexamination.

The defendants filed for summary judgment, arguing laches barred the inventorship claim and the statute of limitations barred the remaining state law claims for unjust enrichment and fraud. The district court granted the motion, applying a presumption of laches based on the delay of greater than six years before bringing the inventorship claims. The plaintiff appealed.

The Federal Circuit affirmed. The plaintiff first argued the presumption of laches following a six year delay in bringing a suit over inventorship should not have applied because of the reexamination proceeding in one of the patents. The court pointed out the plaintiff's inventorship claim did not change as a result of the reexamination, so there was no reason for the reexamination proceedings to "reset" the laches clock.

Even if the presumption applied, the plaintiff argued she had rebutted the presumption. She claimed her unfamiliarity with the U.S. patent system, inability to obtain legal counsel, and efforts to license her inventorship rights were sufficient to overcome the presumption. The court dismissed these arguments, noting the plaintiff had legal counsel as early as 1999. Further, "a patentee's inability to find willing counsel . . . is widely rejected as a legally cognizable reason to excuse an unreasonable delay in filing suit," and, in any event, the plaintiff's "interest in licensing her claimed invention should have provided a strong incentive for her to correct inventorship as soon as possible." The court then noted the prejudice caused by the delay, particularly the death of three relevant witnesses. As a result, the court found that the presumption had not been overcome.

Finally, the plaintiff asserted unclean hands should prevent the defendants from asserting laches. As stated by the court: "a plaintiff relying on the unclean hands doctrine to defeat a defense of laches must show not only that the defendant engaged in misconduct, but moreover that the defendant's misconduct was responsible for the plaintiff's delay in bringing suit." Here, the court noted that "the misconduct on which [the plaintiff] relies is the very same conduct that forms the basis for her inventorship claims." Because the application of that logic would mean that "laches would never be available as a defense to an inventorship claim," the court held unclean hands did not prevent application of laches. As a result, the court found that the district court had correctly applied laches to the case and that the plaintiff's claims were barred.

The court reached similar results on the statute of limitations issues, noting the delay from 1998 to 2006 was greater than the applicable six-year statute of limitations. For many of the same reasons as with the laches claim, there was likewise no reason to equitably toll the statute of limitations. Therefore, the court affirmed the dismissal of the state law claims on statute of limitations grounds.

To read the full decision in Serdarevic v. Adv. Med. Optics, Inc., click here.

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