Pei-Herng Hor, et al. v. Ching-We “Paul” Chu


Docket No. 2011-1540

NEWMAN, PROST, REYNA
November 14, 2013

Brief summary: 35 U.S.C. § 256 cause of action (inventorship dispute) does not arise until the patent issues.

Summary: Mr. Hor and Ms. Meng filed suit against Mr. Chu under 35 USC 256 for correction of inventorship of U.S. Pat. Nos. 7,056,866 and 7,709,418. They appealed the DC grant of SJ to Chu as it found Hor/Meng’s claims barred by laches or equitable estoppel. Hor (graduate student) and Meng (scientist) worked with Chu (professor of physics) on on high temperature superconducting compositions at the University of Houston. Chu is the sole named inventor on the patents. The claimed compositions were conceived between Nov. 1986 and March 1987, and the DC found that laches barred the inventorship claims because Chu and Meng “knew or should have known of their claims by the early 1990s at the latest” but the suit was not filed until 2008 (and Meng did not intervene until 2010) (e.g., more than six years after knowledge of claim (Adv. Cardiovascular Sys., FC 1993)). However, Hor/Meng argued that “because a 35 U.S.C. § 256 cause of action does not arise until the patent issues, the laches clock accordingly cannot begin to run prior to issuance” and their suit was therefore timely filed. The FC panel agreed, citing the plain language of 35 USC 256 and A.C. Aukerman (FC 1992). The DC also entered judgment in favor of Chu on Meng’s unclean hands defense (Chu’s attorney did not notify her that her co-worker raised Meng’s inventorship as an issue during an interference), with which the FC panel agreed, or that the the inventorship claims were barred by equitable estoppel, with which the FC panel disagreed because Chu did not assert the defense (sua sponte judgment by the DC). Thus, the case was remanded.

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