Olivia N. Serdarevic v. Advanced Medical Optics, VISX, Stephen L. Torkel and Francis A. L'Esperance, Jr. M.D. (CAFC 2008-1075)

The patents in suit: 4,665,913; 5,108,388; 5,188,631; 5,207,668; 5,711,762; 5,735,843.

Serdarevic "claimed to have conceived of her invention between September 1979 and September 1983."

Serdarevic learned of the patents-in-suit in October 1998. Through an attorney, Serdarevic contacted VISX in 1999, claiming to be an inventor of the patents-in-suit and requesting a share of past and future royalties derived from the patents. In September 1999, VISX's counsel requested that Serdarevic provide documentation corroborating her inventorship claims, and Serdarevic's counsel agreed to do so. But Serdarevic did not contact VISX again until after she filed her complaint in this action in September 2006.

Too late.

[T]he district court held that Serdarevic's inventorship claim was barred by laches and that her state-law claims were barred by the applicable statutes of limitations.

Case law -

Laches is an equitable defense that may bar an inventorship claim. See Lane & Bodley v. Locke, 150 U.S. 193, 201 (1893).

"[A] delay of more than six years after the omitted inventor knew or should have known of the issuance of the patent will produce a rebuttable presumption of laches." Advanced Cardiovascular Sys., Inc. v. Scimed Life Sys., Inc., 988 F.2d 1157, 1163 (Fed. Cir. 1993).

A patentee can rebut the presumption of laches "by offering evidence to show an excuse for the delay or that the delay was reasonable" or by offering evidence "sufficient to place the matters of [evidentiary] prejudice and economic prejudice genuinely in issue." Aukerman, 960 F.2d at 1038; see also Intirtool, Ltd. v. Texar Corp., 369 F.3d 1289, 1297 (Fed. Cir. 2004) ("The laches defense has two underlying elements: first, the [plaintiff's] delay in bringing suit must be 'unreasonable and inexcusable,' and second, the [defendant] must have suffered 'material prejudice attributable to the delay.'" (quoting Aukerman, 960 F.2d at 1028)).

Serdarevic cried "unfamiliarity with the U.S. patent system, her inability to obtain legal counsel, and her efforts to license her inventorship rights." The sad keening of violins of sympathy were not aroused.

Serdarevic also wailed unclean hands, but could show no dirt.

Under the unclean hands doctrine, "[e]ven if unable to overcome the presumption, a [plaintiff] may be able to preclude application of the laches defense with proof that the [defendant] was itself guilty of misdeeds towards the [plaintiff]." Aukerman, 960 F.2d 1038. To succeed in an unclean hands claim, a plaintiff is required to show that the defendant has "engaged in particularly egregious conduct which would change the equities significantly in plaintiff's favor." See id. at 1033 (citing Bott v. Four Star Corp., 807 F.2d 1567, 1576 (Fed. Cir. 1986)). But it is not enough merely to show misconduct. See Yeda Research & Dev. Co. v. ImClone Sys. Inc., 443 F. Supp. 2d 570, 629-30 (S.D.N.Y. 2006) ("Because we find that defendants' hands are unclean, i.e., they are responsible for plaintiff not finding out about their patent applications, the laches defense is unavailable to defendants."); see also Potash Co. of Am. v. Int'l Minerals & Chem. Corp., 213 F.2d 153, 155 (10th Cir. 1954) ("If the party which advances the defense of laches is responsible for the delay or contributes substantially to it he cannot take advantage of it."); Bound v. Spencer Gifts, Inc., No. Civ. A. 95-2216, 1996 WL 556657, at *4 (E.D. Pa. Oct. 1, 1996) ("The doctrine of 'unclean hands' applies to cases of an exceptional character, such as where a defendant was responsible for plaintiff's delay or affirmatively allayed the plaintiff's suspicions through deception."). Thus, we hold 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 misconduct, but moreover that the defendant's misconduct was responsible for the plaintiff's delay in bringing suit.

In this case, Serdarevic has not expressly identified the conduct by the defendants that she claims gives rise to her unclean hands defense. See Appellant's Reply Br. at 28 (arguing only that "Serdarevic provided an ample record of the Defendants' unclean hands."). It appears from Serdarevic's citations to the record that she claims that the defendants' "particularly egregious conduct" was the omission of Serdarevic as a co-inventor of the patents-in-suit and the concealment of the patent applications from Serdarevic. See Appellant's Br. at 43. However, Serdarevic has not identified any way in which the alleged misconduct of the defendants was responsible for her delay in bringing her claim after she learned of the patents-in-suit in 1998. Moreover, the misconduct on which Serdarevic appears to base her unclean hands claim is the very same conduct that forms the basis for her inventorship claims--namely, the defendants' failure to name her as an inventor of the patents-in-suit. If the failure to name an inventor were sufficiently "egregious conduct" to give rise to an unclean hands claim, then laches would never be available as a defense to an inventorship claim. Because the defendants' alleged misconduct was not responsible for Serdarevic's delay, the district court was correct to conclude that the defendants' laches defense was not precluded by unclean hands.

A fraud charge went nowhere, as did everything Serdarevic had to say.

Affirmed on appeal.