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Fresh From the Bench: Precedential Patent Cases From the Federal Circuit

February 23, 2016

Overview

By Peter E. Heuser and Devon Zastrow Newman

Ohio Willow Wood – In the latest chapter of a long-running dispute between two manufacturers of prosthetic limbs, the Circuit rules that Ohio Willow Wood must pay Alps the attorney fees it incurred from the time it engaged in inequitable conduct during the second of two ex parte reexaminations. This determination is based on the panel's holding that the district court was not clearly erroneous in ruling that OWW's patent liaison was guilty of inequitable conduct by failing to disclose letters to the PTO that provided corroboration to testimony that OWW repeatedly contended was uncorroborated. Pursuant to Therasense, the panel agrees that deceptive intent is the single most reasonable inference to be drawn from the evidence. The PTO had withdrawn its rejection because the testimony about alleged prior art was uncorroborated, so the panel also found that the district court's ruling of "but for" materiality was not clearly erroneous.

While the panel finds that the district court did not abuse its discretion in its ultimate conclusion that the patent was unenforceable, the panel finds that Alps had not demonstrated by clear and convincing evidence that deceptive intent was the single most reasonable ‎inference to draw from the liaison's failure to disclose "confidential" declarations from the litigation. Finally, the panel rejects Alps' cross appeal contending that other related patents should also be held to be unenforceable, as those patents had never been in the litigation and Alps had not requested such relief in its counterclaim. ‎

Zoltek– The Circuit reverses a determination of invalidity by the Court of Federal Claims based on violation of the written description requirement and obviousness. Zoltek sought compensation from the United States for use of the patented method of producing carbon fiber sheet products used in the B-2 Bomber and the F-22 Fighter. As to the written description requirement, the CFC held that the broadened claim of a reissue application filed within two years of the original patent was not supported in the specification. To the contrary, the panel holds that it is not an improper broadening amendment when a reissue applicant substitutes a preparatory step known to those skilled in the art with a requirement to start with the product of that known preparatory step. With respect to obviousness, the panel rejects the attempts by the government's expert to reconstruct the invention using not only teachings that were not prior art but also the teachings of the patent itself. The patent cannot be used as a road map for putting together the pieces of a jigsaw puzzle to come up with the claimed invention.

Lismont Ten years after issuance of the pertinent U.S. patent,Lismont sued Binzel and the named inventor Sattler, claiming that he and not Sattler should have been named as inventor. The Circuit affirms the district court's conclusion that the presumption of laches applies to Lismont's claim, and holds that Lismont failed to rebut that presumption, even though Lismont had been litigating inventorship in German and European courts against Binzel and Sattler for seven of the intervening years, and had communicated in writing with Sattler regarding his intent to seek compensation.

Specifically, Lismont informed Sattler that he would be "extensively assessing and pursuing [Sattler's] conduct and actions from every legal perspective." The letter further stated that if neither Sattler nor Binzel responded by a stated date, Lismont would "initiate the necessary legal steps without further notice." Neither Sattler nor Binzel responded. The panel notes that although this threat was made in a timely fashion, and intervening litigation often serves to rebut the presumption, it is critical here that the German and European courts where Lismont was litigating inventorship were not asked to and did not have the power to correct inventorship as to a U.S. patent.



The Ohio Willow Wood Co. v. Alps South, LLC,Fed. Cir. Case 2015-1132, -1133 (February 19, 2016)

OWW owns a group of patents directed to cushioning devices that fit over the stumps of amputated limbs to make the use of prosthetics more comfortable. The cushioning devices consist of stretchable pieces of synthetic fabric coated with a gel on only the side touching the body. That design creates a gel side that reduces irritation to the skin and a dry side that allows free interaction with the prosthesis.

OWW charged Alps with infringement of its '237 patent. Alps challenged validity in two successive ex parte reexamination proceedings. The first reexam focused on ads for a prior art cushioning device called the Silosheath, made by Silipos, an OWW competitor. It consisted of a sheath made of fabric with gel material on the inner side. OWW overcame an initial rejection by showing the examiner a Silosheath product in which the gel on the inner or skin side of the liner had bled through to the outer side. The examiner allowed OWW to amend its claims to clarify that the gel coating was found only on the inner side of its claimed device and issued a reexamination certificate.

Alps then initiated a second reexamination based on an ad in a trade magazine which depicted a gel liner identified as the Single Socket Gel Liner ("SSGL"), from the Silosheath product line. Alps argued that the SSGL was invalidating because it had gel on its inner surface, but not on its outer surface. In addition to the ad, Alps presented a declaration from Jean-Paul Comtesse, who worked at Silipos when the Silosheath and the SSGL were developed. Comtesse stated that the SSGL did not have the same gel bleed-through problem as the Silosheath because it was manufactured from a fabric that was thicker and denser than the fabric used in the Silosheath.

The examiner agreed with Alps and rejected the claims of the '237 patent for obviousness in light of the SSGL and other prior art. OWW appealed the rejection to the Board. In its brief to the Board, OWW argued that Comtesse's testimony was unreliable because it was uncorroborated and because Comtesse was the inventor of the SSGL and continued to receive royalties on the product. The Board reversed the examiner's rejection, agreeing that Comtesse's testimony was uncorroborated and that he was an interested third party. Based on those conclusions, the Board held that the examiner had erred in crediting Comtesse's testimony that the SSGL had gel on only its inner side.

Following the second reexamination, the court granted Alps' motion for summary judgment of invalidity as to all the asserted claims. The court invalidated some of the claims based on the collateral estoppel effect of a decision against OWW in a case from a different district court. It invalidated the remaining claims based on the Silosheath, the SSGL, and other prior art. The court also granted summary judgment to OWW as to Alps' inequitable conduct claim, holding that there was no triable issue of inequitable conduct on OWW's part. We affirmed the summary judgment of invalidity. With respect to inequitable conduct, however, we concluded that the case presented genuine issues of material fact, and remanded the case.

District Court Finds the Patent Unenforceable Because of the Conduct of OWW's Patent Liaison

On remand, after a bench trial the court found there to be inequitable conduct in the second reexamination, but not in the first. The inequitable conduct arose from the conduct of James Colvin, who was responsible for overseeing the Alps litigation. OWW used the same firm for both the litigation and reexamination proceedings in this case, which established a screen to separate the attorney handling OWW's reexamination from the attorneys handling litigation. With the creation of the screen, Colvin became the connection between OWW's litigation and reexamination counsel. Colvin reviewed filings and attended hearings in both the litigation and the reexam. He was sophisticated with respect to patents, as he had overseen the prosecution of about 30 patents and was an inventor on about 20 patents. Colvin testified that, although he understood that he was the person "in the middle," he did not send OWW's reexamination counsel "all information . . . regardless of how important it might have been." Instead, Colvin sent OWW's reexamination counsel only "whatever he requested or I thought was appropriate."

The court ruled that Colvin engaged in inequitable conduct during the second reexamination based on a series of factual findings regarding whether Comtesse's testimony was uncorroborated. The court found (1) that Colvin was aware that OWW's reexamination counsel had represented to the Board that Comtesse's testimony was entirely uncorroborated; (2) that Colvin was aware of materials that corroborated Comtesse's testimony; and (3) that Colvin failed to correct his counsel's misrepresentations.

The items the court identified as corroborative of Comtesse's testimony included a pair of letters sent to OWW in April and October of 1999 by Michael Scalise, an attorney for Silipos ("the Scalise letters"). The first of the Scalise letters stated that Silipos had sold the "SiloSheath product line" since "at least as early as 1992" and that one of the products in that line "contained the polymeric gel on only the inside of the sock." That letter concluded that Silipos's "original sales of their SiloSheath product line having the gelatinous materials on only the inside pre-date the filing date" of the '237 patent. The letter also enclosed a 1994 patent application for the Silosheath product line that disclosed a protective garment having "an inner layer comprising a gel." The second Scalise letter claimed that Silipos's sale of liners "having the gelatinous material on only the inside of the sock pre-date the filing date of the '237 patent by more than one year." Attached to the letter was a November 1, 1993, shipping invoice that was for one of the Silipos products with gel on only one side.

OWW did not disclose the Scalise letters to its reexamination counsel, and the letters were not disclosed in the course of either reexamination. The court also found that Colvin had knowledge of three declarations that were attached to Alps' 2006 summary judgment motion. The declarants stated that Silipos had offered the SSGL product prior to January 1, 1995, and that the SSGL had no gel on the exterior of the liner and no bleed-through, as was the case with some of the Silosheath products. One of the three declarants stated that he had fitted a patient with the SSGL, which used a substantially thicker fabric than the Silosheath, and as a result did not allow the gel to pass through to the exterior of the liner.

The court found that the Board accepted as true OWW's representation that Comtesse's testimony was uncorroborated and concluded that "absent OWW's misrepresentations that no corroborating evidence existed, the Board would not have reversed the Examiner and reinstated the '237 patent." The court's finding mirrored the Board's opinion that the dispositive issue in this appeal is Comtesse's testimony in support of the rejections. Moving to the issue of intent, the court found that deceptive intent was the single most reasonable inference to draw from the evidence with respect to Colvin. Based on its inequitable conduct finding, the court held the patent unenforceable, found the case to be exceptional, and imposed a fee award against OWW. The fee award required OWW to pay Alps' attorney fees incurred in litigating this case after the Board's decision on the second reexamination. The court denied Alps' request that the court extend its holding that the '237 patent was unenforceable to three other related patents.

Therasense Requires That Specific Intent to Mislead Is the Single Most Reasonable Inference

OWW argues that the district court erred in finding that OWW, through Colvin, was guilty of inequitable conduct during the second reexamination. A party seeking to prove inequitable conduct must show by clear and convincing evidence that the patent applicant made misrepresentations or omissions material to patentability, that he did so with the specific intent to mislead or deceive the PTO, and that deceptive intent was the single most reasonable inference to be drawn from the evidence. Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) (en banc). On appeal, we review the district court's findings of fact on the issues of materiality and intent for clear error. We review the district court's ultimate finding of inequitable conduct based on those underlying facts for an abuse of discretion.

To prove the element of materiality, a party claiming inequitable conduct ordinarily must show that the patentee "withheld or misrepresented information that, in the absence of the withholding or misrepresentation, would have prevented a patent claim from issuing." Therasense. The district court acknowledged that the Scalise letters did not conclusively answer whether the SSGL was on sale before the critical date of the '237 patent and whether the SSGL had gel only on the inside of the liner. However, the court explained that the significance of that evidence was not that it conclusively proved that an anticipating device was on sale, but that it corroborated Comtesse's testimony to that effect.

The Finding That Corroborating Evidence Was Material Is Not Clearly Erroneous

Comtesse testified that the SSGL depicted in the January 1, 1995 ad represented invalidating prior art having gel only on the inner side. The assertion in the Scalise letters that Silipos sold a product with gelatinous material on only one side prior to March 5, 1995, corroborates Comtesse's testimony. The court found that the withheld evidence became "but-for" material to patentability in the second reexam once OWW argued to the Board that Comtesse's testimony was uncorroborated. That finding is well supported in light of the Board's focus on the existence of corroborating evidence as the dispositive issue in the case and its acceptance of OWW's representations that no corroborating evidence existed.

OWW argues that Silipos used the term "Silosheath" to refer to products with a thin nylon sheath, not the thicker fabric found in the SSGL, which was referred to as a "liner." Again, the Scalise letters undermine that argument; the second Scalise letter refers to "various Silosheath tube-shaped sock products," including the "Silosheath Prosthetic Liner," sold before the critical date of the '237 patent, which had "gelatinous material on only the inside of the sock."

The court's finding on the issue of materiality is supported by the evidence at the trial on remand. Given the Board's determination that corroboration was the dispositive issue, and in light of OWW's assertions before the PTO that there was no corroborating evidence for Comtesse's testimony, the district court's determination that the corroborating evidence was material to patentability is not clearly erroneous.

There Was No Clear and Convincing Evidence That Colvin Was Aware of the 2006 Declarations

In addition to the Scalise letters, the district court held that Colvin was guilty of inequitable conduct in the second reexamination by withholding the 2006 declarations from the PTO. OWW argues that Colvin was unaware of those declarations because they were contained in a summary judgment motion that was filed under seal and was subject to a protective order. Colvin testified that he believed he was not entitled to read the sealed materials and therefore did not read the motion or the attached declarations.

The district court found Colvin's testimony on that point not to be credible, as the protective order did not bar OWW employees such as Colvin from viewing sealed materials (other than those denominated for attorneys' eyes only). The court found that it was inconceivable that the OWW representative responsible for litigation involving the '237 patent—the commercial embodiment of which was OWW's best-selling product—would not review the portions of Alps' summary judgment motion and exhibits not designated as attorney's eyes only, or otherwise designated as confidential. The court therefore found that as of 2006 Colvin knew that the three prosthetists had corroborated the testimony that Silipos manufactured and sold a version of the SSGL that did not allow gel bleed-through prior to March 5, 1995.

Viewing the record as a whole, we disagree that there was clear and convincing evidence that Colvin was aware of the 2006 declarations. No witness testified that Colvin saw the 2006 declarations or learned of their contents. Colvin testified that he had never seen the declarations and was only told about the basis for the summary judgment motion "in general terms." He testified that he was told only that "there were some declarations that supported the summary judgment motion and that it was filed under seal." Both of the litigation attorneys for OWW testified that they understood that the entire appendix of the summary judgment motion, which included the declarations, was confidential and could not be shared with Colvin.

In light of the high standard of proof required to establish the intent prong of inequitable conduct, the evidence of Colvin's role in supervising the litigation was not sufficient to establish that he was familiar with the 2006 declarations. Based on the failure of proof, we hold that Alps failed to show that Colvin acted with deceptive intent in concealing those declarations from the PTO or that deceptive intent was the single most reasonable inference to draw from his conduct.

The Determination That Unenforceability Does Not Extend to Other Patents Is Affirmed

Alps appeals the decision not to extend the determination of unenforceability beyond the '237 patent to two related OWW patents. The district court did not err in that regard. As the court noted, those patents have never been at issue in this litigation, and Alps did not request in its counterclaim the sweeping relief that it now asks us to direct the district court to grant. The district court's refusal to extend the unenforceability holding in these circumstances is appropriately within its discretion and is not in error.



Zoltek Corp. v. United States, Fed. Cir. Case 2014-5082
(February 19, 2016)

Zoltek seeks compensation from the United States for use of the patented method of producing carbon fiber sheet products as claimed in its Boyd '162 reissue patent. Zoltek originally filed suit in the U.S. Court of Federal Claims ("CFC") alleging that the process used to produce carbon fiber sheet materials for the B-2 Bomber and the F-22 Fighter Plane infringed the '162 patent. After a circuitous path that involved two prior appeals to this court, the case was bifurcated into validity and infringement and was tried to the CFC. The CFC held the patent to be invalid due to violation of the written description requirement and based on obviousness.

The Invention

The '162 patent is directed to a method of manufacturing carbon fiber sheet products whose electrical resistivity is pre-selected and value-controlled by the described method. This method is based on Boyd's discovery of a non-linear relationship among the heat treatment conditions, partial carbonization, and surface resistivity of sheet products. The method starts with a previously oxidized and stabilized carbonizable fiber, a product known in the prior art and commercially available. This oxidized fiber is then partially carbonized in accordance with the relationship discovered by Boyd, to produce a partially carbonized fiber whose sheet products have the desired pre-selected surface electrical resistance. This method permits production of carbonized sheets of pre-selected and uniform electrical resistance, and thus uniform pre-selected insulating properties. The '162 specification states that theretofore carbon fiber sheets having specified surface electrical resistance were available only by including other materials, such as glass or aluminum filaments, with the carbonized fibers.

Contrary to the CFC's Ruling, the Written Description Requirement of § 112 Is Satisfied

The CFC held that the original patent did not support the elimination of the oxidation and stabilization step from the reissued claims, and that this rendered the claims invalid for lack of written description. The CFC explained that the reissue "impermissibly broadens the patented process by reducing the number of steps required for infringement." The CFC stated that "although the step is found in the reissue patent, its elimination from the claims goes beyond the written description of the invention in the original patent." The elimination of the preparation of the starting material broadened the reissue. However, a patentee is entitled to a reissue "enlarging the scope of the claims," when, as here, the reissue application is filed "within two years from the grant of the original patent." 35 U.S.C. § 251(d).

The CFC also held that the broadened claim is not supported in the specification, holding that it is irrelevant that the omitted oxidizing and stabilizing step is fully described in the specification as well as being in the prior art. The CFC held that the preparation of the known starting material must be included in the claim, that it is insufficient that the reissue claim requires that these steps be performed, and that whether these steps were known to the prior art is "irrelevant to the question of whether the written description requirement is satisfied."

There was no argument as to insufficiency of either the prior art or the content of the specification, in describing the starting material. There was no allegation that a person of ordinary skill in this field would not understand the description in the specification. The original specification plainly, and without dispute, describes that the starting material is an oxidized and stabilized fiber, cites references showing this known material, and describes its preparation. That a previously oxidized and stabilized starting material was known to a person of ordinary skill was recognized by the reissue Examiner.

The government argues that the asserted claims are not supported in the specification because the specification does not state that these steps need not be performed by the same entity. The question of who performs steps of a fully described invention, including preparation of a known starting material, is not a matter of the written description requirement. The purpose of the written description requirement is to assure that the public receives sufficient knowledge of the patented technology, and to demonstrate that the patentee is in possession of the invention claimed. The requirement is applied in the context of the state of knowledge at the time of the invention. The written description "need not include information that is already known and available to the experienced public."

It is not an improper broadening amendment when a reissue applicant, with the considered agreement of the reissue Examiner, substitutes a preparatory step known to those skilled in the art at the time of the invention with a requirement to start with the product of that known preparatory step. The CFC's emphasis on who might infringe the broadened reissue claims is an issue of infringement, not written description.

The Claimed Invention Was Not Obvious Just Because an Expert Can Reproduce the Invention Using Hindsight

The science of carbonized fiber materials had been the subject of study well before the Boyd patent application was filed, as exemplified in the references cited during patent prosecution and in these proceedings. It is not disputed that the non-linear relationship and its application to achieve the results described in the '162 patent were not previously known. The government's expert, Dr. Sullivan, stated to be one of the nation's preeminent experts with a "thirty year career in research and design relating to carbon fiber science," testified that his calculations pertaining to his reproduction of the patent's Figure 4 curve were based on data that were not in the prior art and were selected retrospectively. No reference showed the relationship between volume or surface-resistivity of carbon fiber sheet products and treatment temperature of carbon fibers.

The position of Dr. Sullivan was summarized at trial as follows:

Q.: So, to sum up your testimony, Dr. Sullivan, you're asserting that it would be obvious to a person of ordinary skill in the art, as of October 1984, to rely upon four publications which do not mention surface resistivity, partially carbonized or semi-conductive carbon fibers, or the method to control the surface resistivity of carbon fiber sheet products made from the — made from the partially carbonized fibers and controlling the volume resistivity of the partially carbonized fiber, the 1972 Hashin and the 1977 Rosen articles referring to structural fibers, that it would have been obvious to a person of ordinary skill in the art, as of October of 1984, to construct the mathematical methodology you described on your direct examination to obtain carbon fiber sheet products having a controlled surface resistivity?

THE WITNESS: That is my testimony.

No reference mentions "surface resistivity" or "the required limitation to pre-select individual fiber volume resistivities to produce sheet products with desired surface resistivities." Dr. Sullivan testified that he was not aware of anyone, including himself, who had previously used the mathematical formula he created to determine carbonization temperature-resistivity relationships.

The '162 patent teaches carbonized sheets that "require no insulating elements such as glass fiber in order to adjust the surface resistances of the sheet product to a desired surface resistance volume." The novelty of such sheets was not disputed. The patent prosecution contains a letter from George Rodgers, a materials engineer at Northrup Grumman (the general contractor for the B-2 Bomber), who stated:

In December 1983, the Material & Processes Department of Northrop Advanced Systems Division ordered four rolls of carbon fiber paper from [the original patentee]. The product was unique in that the carbon fibers were not fully carbonized, increasing the volume resistivity of the fiber which in turn increases the surface resistivity of the paper. At the time the order was placed, Northrop Materials & Processes had never seen a material of this type before and was not aware of any other company that could supply material in this form with varying electrical properties.

Dr. Sullivan testified that he had no basis to disagree with the Rodgers letter.

There is no teaching or suggestion in the prior art to select the data that Sullivan selected, and to plug the selected data into the mathematical equation that Sullivan devised. As summarized by Zoltek, "Sullivan used the variable fiber volume resistivities shown in the file history of the parent patent at various temperatures and constant volume resistivities for each remaining component of the sheet products in making his calculations." This is not evidence of obviousness.

Dr. Sullivan conceded that there were errors in his calculations, stating that the reason was that he did not have complete information. That is not surprising, for there was not complete information in the prior art weighing against the government's argument that it would have been obvious to a person of ordinary skill to recreate the Boyd graph from known information. Dr. Sullivan's complaint that he could not accurately duplicate Boyd's discovery because of lack of information is powerful evidence of non-obviousness—not the contrary.

Dr. Sullivan stated that he obtained some of the values he used in his calculations from the '162 patent itself. However, for the volume fraction of carbon fiber, described by Dr. Sullivan as by far the most important element in the equation, he ignored the figure in the patent (0.83) and used a value of 0.3, which he testified came from a Zoltek 2000 User's Guide. Zoltek points out that this Guide was directed to an entirely different product, and also that the Guide was written fourteen years after the '162 patent application was filed. There was no showing that the information on which Dr. Sullivan relied was available to persons of skill at the time of the Boyd invention. Zoltek states, and Dr. Sullivan did not contradict, that Dr. Sullivan selected values from various sources in order to fit the template of Boyd's results.

Neither the government's attorney argument, nor Dr. Sullivan's testimony, nor the opinion of the Court of Federal Claims, points to any suggestion in the prior art to select the data selected by Dr. Sullivan and create the mathematical formula to construct a graph to track Figure 4. See KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 418-19 (2007) ("Although common sense directs one to look with care at a patent application that claims as innovation the combination of two known devices according to their established functions, it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does. This is so because inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known.").

The Circuit has recognized "the distortion caused by hindsight bias" and "arguments reliant upon ex post reasoning" in determining obviousness. KSR; InTouch Technologies, Inc. v. VGO Commc'ns, Inc., 751 F.3d 1327 (Fed. Cir. 2014) ("It appears that [the expert] relied on the . . . patent itself as her roadmap for putting what she referred to as pieces of a 'jigsaw puzzle' together."); W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540 (Fed. Cir. 1983) ("To imbue one of ordinary skill in the art with knowledge of the invention in suit, when no prior art reference or references of record convey or suggest that knowledge, is to fall victim to the insidious effect of a hindsight syndrome wherein that which only the inventor taught is used against its teacher."). The CFC's ruling as to obviousness is therefore reversed.



Hedwig Lismont v. Alexander Binzel Corp., Fed. Cir. Case 2014-1846 (February 16, 2016)

Binzel-Germany ("B-G") is a German company that manufactures welding equipment. B-G owns the '406 U.S. patent, directed to a method of manufacturing a contact tip for use in metal inert gas welding. Lismont asserts he developed the method in response to B-G's request for assistance in developing a lower-cost manufacturing process, and disclosed the invention to B-G. Yet, despite B-G confirming to Lismont that he was the first to conceive of this method, B-G filed a German patent application naming Sattler, a B-G employee, as the sole inventor.

Two years after the German priority patent issued (2000), Lismont sued B-G and Sattler in Germany to seek compensation and to change patent inventorship, contending that he was the sole inventor. In 2002, Lismont's counsel sent a letter to Sattler demanding damages, and noted that if Lismont did not receive compensation, he would be "extensively assessing and pursuing your conduct and actions from every legal perspective." The letter further stated that if B-G and Sattler did not respond by July 5, 2002, Lismont would "initiate the necessary legal steps without further notice." Neither Sattler nor B-G responded. In December of 2002, Lismont filed a second action in Germany against B-G and Mr. Sattler, seeking damages related to his inventorship claim. This complaint also sought information about the countries in which B-G was pursuing patents.

Both German courts ruled against Mr. Lismont, finding he failed to prove that he had an inventorship (either sole or joint) interest in the German patent. Lismont's appeal was unsuccessful. Lismont also filed actions in the German Federal Constitutional Court and in the European Court of Human Rights, claiming that the earlier proceedings amounted to a denial of due process in violation of his constitutional or human rights, respectively.

In 2012 Lismont filed this U.S. litigation seeking to correct inventorship of the '406 patent under 35 U.S.C. § 256(a). After the parties engaged in discovery as to laches, B-G filed a motion for summary judgment, asserting that Lismont's inventorship claim was barred by laches. The district court agreed and entered judgment in favor of B-G.

The Presumption of Laches Applies Because of the Ten Year Delay

Lismont argued that his prior litigation against B-G both provided notice of a potential claim in the U.S. and excused his delay in bringing suit. The panel notes that to prevail on a laches defense the defendant has to establish (1) plaintiff's delay in filing a suit was unreasonable and inexcusable; and (2) defendant suffered material prejudice attributable to the delay. Noting that case law establishes that the laches clock cannot run until the patent issues—at the earliest—the panel finds the ten year delay justified applying the rebuttable presumption of laches.

Lismont argued 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 and that the remedies he sought in his foreign litigations ("worldwide damages, including in the U.S., and a worldwide declaration of liability, including in the U.S.") were ongoing litigation of inventorship such that application of the presumption of laches was inappropriate. The panel rejects this reasoning, concluding that 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; therefore, Lismont would have needed to file within six years of August 2002 to avoid the presumption. The panel rejects Lismont's argument that the foreign litigation sought to correct inventorship of the U.S. patent because there were no allegations specifically requesting correction of inventorship of the '406 patent—only money damages in compensation for failing to name him as inventor. Also, Lismont's counsel admitted during oral argument that the foreign courts did not have authority to correct the U.S. patent.

The Presumption Is Not Rebutted Because the German Litigation Could Not Have Corrected Inventorship

Having concluded the presumption was correctly applied, the panel examines whether the presumption could be rebutted by evidence that the delay was reasonable, including by showing the plaintiff was engaged in other litigation. Case law establishes that for other litigation to constitute a delay, the defendant must have been on clear notice of the action and reason for the delay such that the defendant was aware of the threat of litigation upon completion of the other proceedings. The district court had concluded the mere initiation of litigation in a foreign jurisdiction and the existence of U.S. patents are not sufficient to notify a defendant that the plaintiff will eventually seek to assert its patent rights in the U.S.

Lismont argued that he gave notice three ways. First, by filing a document in the first German litigation in which he stated that "the witness Sattler has applied for the patent that is in dispute here in the U.S. in his own name as inventor" and stating an "extension of claim according to § 263 ZPO is therefore expressly reserved." Lismont contended this was a reservation of rights to assert correction of inventorship of the '406 patent. The panel concluded Lismont's reference to "§ 263 ZPO" reserves only his right to "extend" his German claim in front of the German court, and not his U.S. patent, and nothing in this statement could lead a reasonable fact-finder to infer this filing indicated Lismont's intent to pursue a separate inventorship claim in a U.S. court.

Next, Lismont relied on his letter to Sattler of June 2002 demanding damages and noting that if Lismont did not receive compensation, he would be "extensively assessing and pursuing [Sattler's] conduct and actions from every legal perspective" and that Lismont would "initiate the necessary legal steps without further notice" if B-G did not respond by July 5, 2002. The panel finds this communication likewise lacked any indication that Lismont intended to commence legal proceedings to correct inventorship in the United States, and more likely referenced the second German lawsuit, which Lismont shortly thereafter filed.

Finally, Lismont relied on his request in Germany for "worldwide damages." The panel finds this allegation did not provide notice and the complaint in the second German lawsuit did not contain assertions indicating that Lismont was pursuing the issue of inventorship as to the '406 patent or any allegations that this issue would eventually be litigated in the U.S. if left unresolved upon conclusion of the litigation abroad.

Thus, because Lismont did not provide any notice to the defendants that it would pursue litigation in the courts of the United States against the same defendants upon termination of the foreign litigation, the district court did not abuse its discretion to find that laches bars the later claim.

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