Docket No. 2014-1846
LOURIE, REYNA, CHEN
February 16, 2016
Brief Summary: DC grant to SJ to ABC that Mr. Lismont’s inventorship claim was barred by laches was affirmed since he could not rebut the presumption of laches resulting from the ten-year delay in initiating litigation.
Summary: Mr. Lismont appealed DC grant of SJ to ABC that the inventorship claim, filed ten years after the patent (US 6,429,406 directed to a method of manufacturing a contact tip for use in metal inert gas welding) issued, was barred by laches. The ‘406 patent claims was filed from ABC’s PCT application that claims priority to DE 197 37 934 (filed Aug. 30, 1997). Mr. Lismont asserted that he began developing the claimed method in 1995 “in response to Binzel-Germany’s request for assistance in developing a lower-cost manufacturing process” and had fully developed it by 1997. Binzel-Germany filed the DE application on Aug. 30, 1997, naming its employee (Mr. Sattler) as the inventor, which was maintained in the PCT application filed in 1998 as well. On October 13, 2000, Mr. Lismont initiated the first German litigation against Binzel-Germany, maintaining he was the sole inventor. In 2002, he sent a letter to Mr. Sattler demanding damages for false declarations of inventorship and the initiated a second action in Germany, which sought information on where in addition to Germany Binzel-Germany was seeking patent protection and “worldwide damages”. The German courts ruled against Mr. Lismont, finding he did not prove he was an inventor. In October 2012, Mr. Lismont initiated litigation in the US regarding the ‘406 patent. The opinion explains that “[l]aches is an equitable defense that may bar an inventorship claim” and “a rebuttable presumption of laches attaches whenever more than six years passes from the time a purportedly omitted inventor knew or should have known of the issuance of the relevant patent” (Serdarevic, FC 2008; A.C. Aukerman, FC 1992; Advanced Cardio., FC 1993). The plaintiff may rebut the presumption by showing “an excuse for the delay or that the delay was reasonable”. A DC grant of SJ regarding laches is reviewed by the FC for an abuse of discretion. The FC panel found no error with the DC decision, explaining that the ten-year delay in initiating litigation in the US imposed the presumption and he could not show that he was “continuously litigating the issue of inventorship” of the US patent in the German/European litigations (Vaupel, FC 1991; Mainland Indus., FC 1986 (“[W]e are unwilling to say as a matter of law that litigation in non-United States formus cannot be considered in determining excusable delay….”)). In addition, Mr. Lismont could not show he had provided any notice to Binzel-Germany that he would pursue the inventorship claims in the US upon termination of the foreign litigation. Mr. Lismont’s request for “worldwide damages” was found not to alter this conclusion. Thus, the DC decision was affirmed.