Tuesday, February 16, 2016

CAFC in Lismont case finds laches applies to inventorship claims

From the decision:

This appeal arises from an inventorship dispute between
Hedwig Lismont (Mr. Lismont) and Alexander
Binzel Schweisstechnik GmbH & Co. KG (Binzel-
Germany), Abicor Unternehmensverwaltungs GmbH
(Abicor), IBG Industrie-Beteiligungs-GmbH & Co. KG
(IBG), Richard Sattler (Mr. Sattler), and Alexander Binzel
Corporation (Binzel-USA) (collectively, Appellees). The
United States District Court for the Eastern District of
Virginia granted summary judgment in favor of Appellees,
concluding that Mr. Lismont’s inventorship claim,
which he filed ten years after the patent issued, was
barred by laches. See Lismont v. Alexander Binzel Corp.,
No. 2:12-cv-592, 2014 WL 4181586 (E.D. Va. Aug. 20,
2014). Because we agree with the district court’s conclusion
that the presumption of laches applies against Mr.
Lismont’s claim and that he failed to rebut that presumption,
we affirm.


If the presumption of laches attaches, a plaintiff may
defeat summary judgment by “rais[ing] a genuine dispute
as to either delay or prejudice.” Hemstreet v. Comput.
Entry Sys. Corp., 972 F.2d 1290, 1293 (Fed. Cir. 1992). If
the plaintiff makes such a showing, the presumption
dissolves and the defendant is then “put to its proof on
both factors” and “must affirmatively prove
(1) unreasonable and inexcusable delay and (2) prejudice
resulting from that delay.” Id. If, however, we agree with
the district court that there are no genuine issues of
material fact, we may set aside the imposition of laches if
“the decision rests on an erroneous interpretation of the
law or on clearly erroneous factual underpinnings.”
Serdarevic, 532 F.3d at 1358; see also Ray Commc’ns, Inc.
v. Clear Channel Commc’ns, Inc., 673 F.3d 294, 299 (4th
Cir. 2012) (“The court has abused its discretion if its
decision is guided by erroneous legal principles or rests
upon a clearly erroneous factual finding.” (internal quotation
marks omitted)).


Mr. Lismont argues that he did not delay in initiating
the underlying action because he had been diligently
seeking to vindicate his inventorship rights in German
and European courts. Mr. Lismont further asserts that
he specifically sought resolution of the ’406 patent inventorship
issue in the Second German Litigation when he
requested “worldwide damages, including in the U.S., and
a worldwide declaration of liability, including in the U.S.”
Appellant Br. 25. Thus, according to Mr. Lismont, the
parties have been litigating inventorship of the ’406
patent in Germany since he filed the Second German
Litigation in 2002 and the presumption of laches is therefore

We disagree. The relevant inquiry for the laches presumption
is whether more than six years passed between
the time when the inventor knew or should have known of
the subject patent and the time the inventor initiated
litigation. See Aukerman, 960 F.2d at 1034. As the
district court correctly recognized, Mr. Lismont was aware
that Binzel-Germany had filed a U.S. patent application
covering the manufacturing method he allegedly invented
before the ’406 patent issued. Accordingly, to avoid the
imposition of the rebuttable laches presumption, Mr.
Lismont should have filed his United States inventorship
litigation within six years of August 6, 2002, the date on
which the patent issued. Because it is undisputed that he
waited more than ten years from that date to initiate this
litigation, the district court correctly found that the
presumption of laches attached.


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