Laches bars inventorship claim

Laches was successfully asserted against plaintiff SERDAREVIC in a case involving (otherwise well-known)
defendants VISX and FRANCIS A. L’ESPERANCE, JR.

Of laches:

“[A] delay of more than six years after the omitted inventor knew or should have
known of the issuance of the patent will produce a rebuttable presumption of laches.”
Advanced Cardiovascular Sys., Inc. v. Scimed Life Sys., Inc., 988 F.2d 1157, 1163
(Fed. Cir. 1993).

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Once the presumption of laches has attached, “the defendants could have remained
utterly mute on the issue of prejudice and nonetheless prevailed.” Hall v. Aqua Queen
Mfg., Inc., 93 F.3d 1548, 1554 (Fed. Cir. 1996).

Of unclean hands:

Under the unclean hands doctrine, “[e]ven if unable to overcome the
presumption, a [plaintiff] may be able to preclude application of the laches defense with
proof that the [defendant] was itself guilty of misdeeds towards the [plaintiff].”
Aukerman, 960 F.2d 1038. To succeed in an unclean hands claim, a plaintiff is required
to show that the defendant has “engaged in particularly egregious conduct which would
change the equities significantly in plaintiff’s favor.” See id. at 1033 (citing Bott v. Four
Star Corp., 807 F.2d 1567, 1576 (Fed. Cir. 1986)). But it is not enough merely to show
misconduct. See Yeda Research & Dev. Co. v. ImClone Sys. Inc., 443 F. Supp. 2d
570, 629-30 (S.D.N.Y. 2006) (“Because we find that defendants’ hands are unclean,
i.e., they are responsible for plaintiff not finding out about their patent applications, the
laches defense is unavailable to defendants.”); see also Potash Co. of Am. v. Int’l
Minerals & Chem. Corp., 213 F.2d 153, 155 (10th Cir. 1954) (“If the party which
advances the defense of laches is responsible for the delay or contributes substantially
to it he cannot take advantage of it.”); Bound v. Spencer Gifts, Inc., No. Civ. A. 95-2216,
1996 WL 556657, at *4 (E.D. Pa. Oct. 1, 1996) (“The doctrine of ‘unclean hands’ applies
to cases of an exceptional character, such as where a defendant was responsible for
plaintiff’s delay or affirmatively allayed the plaintiff’s suspicions through deception.”).