The U.S. Court of Appeals for the Federal Circuit affirmed a district court's grant of summary judgment that a claim of inventorship was barred by laches and that state law claims of unjust enrichment and fraud were barred by the applicable statute of limitations. Serdarevic v. Advanced Medical Optics, Inc., Case No. 08-1075 (Fed. Cir., July 16, 2008) (Linn, J.).
The case involved Olivia N. Serdarevic, M.D. (Serdarevic), who performed her ophthalmic residency training at Columbia Presbyterian Medical Center from 1979 to 1982. While training at Columbia, Serdarevic claimed that she conceived of the technology behind laser vision correction that two prominent attending physicians had patented without acknowledging her as the inventor or co-inventor. The six patents-at-issue were granted between 1987 and 1998 and were assigned to the defendant.
In 2006, Serdarevic brought suit against the current owner of the patents and the named inventors, seeking correction of inventorship and alleging state law claims of unjust enrichment and fraud against the named inventors. The district court granted the defendants' motions for summary judgment on the presumption of laches based on the delay of greater than six years before bringing the inventorship claims and upon the applicable state statutes of limitation.
Serdarevic challenged the district court's laches determination on three grounds: that the presumption of laches should not have applied because one of the patents had undergone reexamination proceedings; that she presented sufficient evidence to rebut the presumption; and that the defendants' unclean hands precluded them from relying on the laches defense.
According to the Federal Circuit, however, the issuance of a reexamination certificate does not automatically reset the six-year clock for the presumption of laches. In addition, the Court held that the mere possibility that the claims of a patent may be amended does not excuse a delay in bringing an inventorship suit. Therefore, the Court affirmed the district court's application of the presumption of laches.
The Federal Circuit also held that, because there was an absence of evidence that the delay was reasonable or excusable, the plaintiff failed to rebut the presumption of laches. Specifically, the Court held that Serdarevic's assertions of unfamiliarity with the U.S. patent system, an inability to obtain willing legal counsel and efforts to license one's inventorship rights do not suffice to rebut the presumption that the delay was unreasonable or inexcusable.
The Court further held that, in the context of an inventorship action, a plaintiff relying on the unclean hands doctrine to defeat a defense of laches must show not only that the defendant engaged in egregious misconduct, but also that the defendant's misconduct was responsible for the plaintiff's delay in bringing suit. In this case, the Court held that Serdarevic did not identify any instances in which the defendants' alleged misconduct was responsible for her delay in bringing her claim. Therefore, the Court affirmed the district court's finding that the laches defense was not precluded by unclean hands. The Court made similar finding on the state law issues, noting the delay from 1998 to 2006 was greater than the applicable six-year statute of limitations. For the same reasons as with the laches claim, there was likewise no reason to equitably toll the statute of limitations. Therefore, the Court affirmed the dismissal of the state law claims on statute of limitations grounds.
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