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United States: Research In Motion: Purported Inventor's Late-Filed Lawsuit Dooms Claim Of Co-Inventorship Because Laches Based On Economic Prejudice Bars The Claims
In this dispute over the inventorship of a patent that is
integral to BlackBerry products, the district court held a bench
trial on the applicability of laches. The issue at the bench trial
turned on whether RIM suffered economic prejudice as a result of
plaintiff's delay in bringing the lawsuit.
The complaint to correct the inventorship of the patent-in-suit
was filed on August 1, 2011. After a summary judgment motion
disposed of the state law claims, the district court found that RIM
had established a presumption of laches on the
correction-of-inventorship claim but the plaintiff had rebutted the
presumption by showing a lack of evidentiary or economic prejudice
that resulted from the unreasonable delay in bringing the lawsuit.
The district court then ordered a bench trial to resolve the
disputed issues of fact as laches is an equitable defense that is
heard by the court and not a jury. After the bench trial, the
district court made various findings of fact.
The district court framed plaintiff's argument as follows:
"Plaintiff's primary arguments against a showing of
economic prejudice boil down to one simple concept: that after RIM
conducted its 2004 investigation, the die was cast. Put another
way, plaintiff's claim that no lawsuit by plaintiff, no further
evidence provided by plaintiff, would have caused RIM to have
altered its course; therefore, there is no support for a nexus
between plaintiff's delay and any of the things defendant says
it did in reliance on plaintiff's inaction, or what it would
have done alternatively had plaintiff in fact acted."
As part of the findings of fact, the district court found that
"[a]t the time that plaintiff knew or should have been on
inquiry notice of his claims, the only patent that had issued
arguably relating to plaintiff's PageMail invention - i.e., the
software solution that plaintiff had developed and alleges is the
basis for BlackBerry's email technology - was the '694
patent. Krishna Pathiyal ('Pathiyal') testified credibly as
to RIM's intellectual property strategy, how the passage of
time has impacted that strategy with regard to the '694 patent
and 1-3 RIM's internal investigation of plaintiff's claims
in 2004."
As a result, the district court disagreed with plaintiff's
position and found it had no support in the record:
"Plaintiff's position finds no support in the record.
While it is true, as this Court has found above, that RIM did
conduct an internal investigation of plaintiff's claims in
2004, that investigation was based solely on the information to
which RIM then had access. Plaintiff claimed to have more but his
alleged evidence never materialized. It would be incredible for a
business to have made a major strategic decision not to pursue a
patent family because unsubstantiated assertions had been made.
Equally, there is no evidence in the record, and there is evidence
to the contrary, that had plaintiff in fact come forward with
credible evidence of ownership, RIM would have seriously reviewed
it and, if merited, undertaken an appropriate alteration in
courser."
Based on the detailed findings of fact in the opinion supporting
these statements, the district court then rejected plaintiff's
claims: "Based on the extensive evidentiary record and the
credible testimony from Pathiyal, RIM certainly suffered economic
prejudice directly related to plaintiff's delay in bringing
suit. Equity does not condone, and this Court will not allow, a
plaintiff to make unsupported allegations of ownership, disappear
for years while a company builds a successful business strategy
around the very invention in which he asserts an interest, and then
allow him to bring an untimely lawsuit."
Tahir Mamood v. Research in Motion LTD., Case No. 11
Civ. 5345 (KBF) (S.D.N.Y. May 16, 2012)
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