Inventorship Disputes: Six-Year Laches Presumption Applies Despite Intermediate Reexamination

Dr. Serdarevic v. Advanced Medical Optics (Fed. Cir. 2008)

In 2006, Dr. Serdarevic filed an inventorship claim against Advanced Medical (AMO). She argued that AMO’s patented inventions were hers that she had developed during her ophthalmology residency at Columbia Presbyterian. Two of her attending physicians are listed as the inventors of the six patents in suit. Unfortunately for Serdarevic, all her witnesses died before she filed suit.

The district court dismissed Serdarevic’s claims – finding the inventorship claim barred by laches. It turns out that Serdarevic claimed to have invented back in the early 80′s. She learned of the patents in 1998, but waited until 2006 to file suit.

Inventorship Laches: The 1993 Scimed case held that 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.” Here, Serdarevic knew of the patent for more than eight years before filing suit – creating a presumption that laches applies.

Reexamination Does Not (Necessarily) Reset Laches: One of the patents had undergone reexamination during the eight-year period. Serdarevic argued that the laches clock should be restarted at that point. The CAFC rejected the notion of any such rule:

“One thing is clear, and accordingly we so hold: there is no rule that the issuance of a reexamination certificate automatically resets the six-year clock for the presumption of laches in each and every case.”

In one older case, the CAFC allowed reset the laches clock after a reissue. Vaupel (Fed. Cir. 1991). The CAFC distinguished that case because the excluded inventor had participated in the reissue and had given notice that it would pursue its claim after the reissue.

28 thoughts on “Inventorship Disputes: Six-Year Laches Presumption Applies Despite Intermediate Reexamination

  1. RE: “one of my defenses would be that they should have named all the inventors and, because they didn’t, their patent should be unenforcible.”

    It is not so much as invalidating the patent or holding it unenforcible as it is giving the patent holder less or no money if the patent holder wins a patent infringement lawsuit. Why didn’t any of the named inventors contact Dr. Serdarevic at the time of filing to let her know that they just signed an oath under criminal penalty saying they were the only inventor when infact they weren’t? When the assignee received the patent application/patent, what did they ask the inventors about inventorship; what kind of investigation did they do into the inventorship? A jury would want to know the answers to these before awarding any money.

    Dr. Serdarevic tried to get something out of the inventions and lost. Next, all eyes would turn to the patent holder. If there were a subsequent patent infringement action, I don’t see how Advanced Medical (AMO) could come out smelling like roses, whether or not AMO had anything to do with the spector of omitted inventor. As the argument goes, someone screwed inventor Dr. Serdarevic when the patent applications were file and someone’s gonna pay. That is human nature. I don’t think any jury would award money to the patent holder under these circumstances. It would have been better to come to a financial agreement with Dr. Serdarevic then to have her lose on a legal technacality.

  2. Leopold Bloom–
    Don’t you think a criminal statute in this area would simply mimic the pattern of criminal copyright infringement? Thus would relate to certain kinds of willful infringement? I think willfulness as an element would be a sufficiently great mens rea so as to make any mental steps question unimportant.

    In any event, Congress is far more solicitous toward big copyright holders, and thus far more protective of their interests. There’s no way we’ll ever see criminal sanctions for patent infringement. (I’m neither advocating nor opposing such a provision, BTW. Simply expressing what I regard as a political reality. Copyright law is grotesquely counter to the public interest and is intended to be wielded as a sledgehammer against anyone who threatens major media interests.)

  3. “I believe it would be within the power of the Patent Clause for Congress to criminalize infringement.”

    How about for patent claims that can be infringed by mental steps?

  4. “I believe it would be within the power of the Patent Clause for Congress to criminalize infringement.”

    I would bet my life you’re correct. Consider the fact that Congress HAS enacted a statute criminalizing some categories of copyright infringement. See 17 USC 506.

  5. JAOI,

    “How does mandatory sentencing work?”
    :-)

    I believe it would be within the power of the Patent Clause for Congress to criminalize infringement (at least, for the moment, I cannot think of a legal reason why it would not).

    Best of luck to you with your Reply Brief and your pro se endeavor in general.

    Jim

  6. JAOI,

    My “Congress cannot write no statute directing…”.

    Make that

    “Congress can write no statute directing…”.

  7. JAOI,

    “Does this work?: Mr. Infringer, stop infringing lest you will be charged with contempt of court.”

    The only way I know of for a court to make such order is through an injunction, c&d, etc…

    Because injunctive relief is solely a function of the judicial branch, Congress CANNOT DIRECT the court (with “must” or “shall” language) to issue an injunction. Period. In other words, Congress cannot write no statute directing the court perform its function is a specific manner. To do so would violate the separation of powers. For the Congress to direct the courts to issue an injunction upon the finding of infringement with “must” or “shall” langauge would be unconstitutional. The statute as corrected by JAOI would be found (and is) unconstitutional.

    I am sorry you don’t understand that Congress is limited in its power to effectuate its self-created “right to exclude.” Realizing that it cannot direct a court to issue injunctive relief and that a court issues injunctive relief on a case by case basis, Congress provided the alternative remedy of royalties, i.e., compulsory license, in case the court does not enforce your right to exclude in the way you would like them to, i.e, with an injunction.

  8. Dennis,

    Please apply your smut filter to the smut filter letters.
    I just got “mmm69m”! Really, no joke.

  9. Jim H.,

    Note above, I had changed the “may” to “shall.”

    Also, please note in my “corrected” ’283: “…and other provisions found in the Constitution and its Amendments…”
    This allows a Constitutional “taking” (I’m not sure this is the right term) as follows:

    Thus, Congress has absolute Constitutional Power to administer our patent system, and it has rightly done so. Further, within the Constitution itself, one finds authority for Congress to exercise its Power to moderate “the exclusive Right” under certain constitutionally certified circumstances:
    (A) To regulate Commerce,
    (B) provide for the common defense, and to
    (C) promote the general Welfare.

    Article I, §8, Clause 3: “The Congress shall have Power … To regulate Commerce with foreign Nations, and among the several States, and with the Indian Tribes;”
    Thus, in its body of antitrust statutes, Congress imposes certain limits when exercising a patent’s “exclusive Rights” in order to regulate Commerce.

    The Preamble: “We the People of the United States, in Order to form a more perfect Union, establish Justice, insure domestic Tranquility, provide for the common defence, promote the general Welfare, and secure the Blessings of Liberty to ourselves and our Posterity, do ordain and establish this Constitution for the United States of America.”

    Eminent domain power, when exercised over a patent’s “exclusive Rights,” for national security and defense, is absolutely consistent with the Preamble, i.e., to “provide for the common defence.” Thus, military appropriations bills in peacetime and wartime routinely include allocations for patent royalties.

    If an independent inventor discovered and patented a vaccine for Anthrax, but refused to license or manufacture it for his anti-American religious reasons, eminent domain could absolutely and reasonably be asserted to “promote the general Welfare.”

  10. JAOI,

    What you want is injunctive relief or a c&d, correct? In either case, the infringer is susceptible to being found in contempt of court and jail time if the infringing continues.

    Is this what you want in the corrected statute? If so, then you’ll probably want to change the “may” to a “must.”

  11. Jim H.,

    Does this work?: Mr. Infringer, stop infringing lest you will be charged with contempt of court.

    Or, Cease and Desist!, or you will be hung by the neck until dead (C¿D).

  12. JAOI,

    How does the court “grant . . . the right to exclude . . . to prevent the violation” under the statute as corrected by JAOI?

  13. Dear Jim H.,

    Thanks for the example. I agree, there may very well be exceptions to any rule. I’m reminded of a settlement meeting I attended with my counsel. The infringing CEO brought his inside and outside counsel and four engineers. At one point one engineer piped up with a Cheshire cat’s grin and asked if a particular odd set of circumstances was an infringement in my view. I said, I donno, but in normal operation, of course, you system undeniably infringes.

    Thanks also for the separation of powers explanation which delves further into “the exclusive [statutory] Right.” Here’s my opinion – IF Congress elects to exercise its Patent Clause power, the Constitution specifies that Congress give “the exclusive Right” to the Inventor. The statutory Right in 35 USC 154 emanates from, and is required by, this specified statutory Right in the Constitution’s Patent Clause. Our Courts, including the Supreme Court, are bound to enforce this statutory patent Right, i.e., “the exclusive Right.” For any Court to grant less violates the separation of powers. eBay, of course, muddied the waters,

    When it enacted 35 USC 283, Congress screwed up, and the Supremes followed suit in eBay, by using the term “injunction.” The Constitutionally correct terminology for 283 would be terminology similar to that found in 154:

    “35 U.S.C. 154 Contents and term of patent; provisional rights.
    (a) IN GENERAL.-
    (1) CONTENTS.-Every patent shall contain a short title of the invention and a grant to the patentee, his heirs or assigns, of the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States, and, if the invention is a process, of the right to exclude others from using, offering for sale or selling throughout the United States, or importing into the United States, products made by that process, referring to the specification for the particulars thereof.”

    This is the current Constitutionally unlawful 283:
    “35 U.S.C. 283 Injunction.
    The several courts having jurisdiction of cases under this title may grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable.”

    This is in essence the way 283 should read:
    35 U.S.C. 283 The Exclusive Right [as corrected by Jaoi™].
    The several courts, having jurisdiction of cases under this title, shall grant, in accordance with the Constitution, Article I, Section 8, Clause 8 and other provisions found in the Constitution and its Amendments, the right to exclude others from making, using, offering for sale, or selling the invention, and on other terms as defined in 35 USC 154, to prevent the violation of any patent right secured by ’154.

  14. “Can inequitable conduct not be cured under some circumstances, e.g., by re-examination?”

    I don’t think so.

  15. “I understand the distinction, I just think it’s a distinction without a difference.”

    Can inequitable conduct not be cured under some circumstances, e.g., by re-examination?

  16. Jim H.

    Thanks for the reply. I understand the distinction, I just think it’s a distinction without a difference. If any accused infringer were represented by counsel and took a license under your fact pattern, that attorney would be liable for malpractice, IMHO.

  17. smashmouth football,

    Invalidity does not equal unenforceability.

    The issues involving the two are different. Validity addresses 101, 102, 103, and 112 issues (questions of law); unenforceability takes into account inequitable conduct (question of equity). An invalid patent is not enforceable because there was a finding of unenforceability; it is unenforceable because a finding of invalidity invalidates the rights created under the Patent Act. The patentee loses his patent rights with a determination of invalidity and his right to filing a civil lawsuit in the form of an infringement action.

    I have not read Blonder-Tongue in its entirety. I just found it on the web, read the syllabus, and from my quick read, the holding means that once a court finds claims of a patent invalid, then the claims are invalid against the world. Given this statement, I reply.

    The difference between my fact pattern and B-T is that the patent remains valid; there was no finding of invalidity, in fact, the court in my fact pattern found the patent it to be valid under 101, 102, 103, and 112 . Unlike the loss of patent rights in B-T due to the finding of invalidity, the court did not invalidate the patent. Hence, the patentee still possesses the right to exclude and, in my opinion, write demand letters to other infringers and assert his patent as valid because it would not be a misrepresentation; he may seek to enter into royalty agreements because you still possess a valid patent. He may not, however, assert his patent is enforceable without making a fraudulent misrepresentation.

    Now, if the party to whom the patentee approaches does not conduct a Westlaw research to see if any court has taken any action against the patent, then he enters the contract at its own risk; however, if the party finds the court’s prior determination of unenforceability, the he can tell the patentee to get bent and enjoy the patent to his heart’s content because he knows that no court in the land will enforce the patent against him.

  18. JAOI,

    Regarding the Constitution, there is the principle of separation of powers. Implicit in this principle is that Congress shall not interfere with the functions of the judicial branch. Traditionally, the issuance of injunctions falls within the purview of the judicial branch who, in turn, applies the four elements to test whether it wants to provide for injunctive relief. This is a function solely of the courts. Congress has no say to tell the courts how to perform its function because of the separation of powers. Conversely, the courts cannot tell Congress what Acts to pass. In any act including the Patent Act, Congress CANNOT TELL the courts how to do their business. If Congress wants injunctive relief to apply, then it must provide for such remedy but must sit back and let the courts do their thing. For Congress to demand an injunction upon a finding of infringement only violates the separation of powers.

  19. Jim H. said, “Yes, nothing has affected your right created in the patent. In my opinion, you may write demand letters to other infringers, assert your valid patent, and enter into royalty agreements because you still possess a valid patent.”

    I don’t understand how that can be. In 2, you state the exact contrary, “your patent is unenforceable.”

    And ever since Blonder Tongue, this patent is unenforceable against the world.

  20. JAOI,

    There is a fundamental distinction between a right and a remedy, and I will try to illustrate by way of an example.

    Suppose you and a co-inventor are patentees of a patent. When the patent issued, you began to possess a patent right from which you may initiate a civil action claiming infringement of patent.

    Both of you sue another for infringement to which there is no question: the guilty bast8rd has admitted that he personally went to the PTO, copied the patent, took the copy back home, and is mass producing a product based on the word for word description disclosed preferred embodiment; there’s no question, his product infringes every single claim, and it looks like a slam dunk.

    During litigation, you moved to have your patent declared valid, the other side did contested, but the court found your patent valid under 101, 102, 103, 112. You moved to have the court find infringement, and the smug guilty bast8rd offers to draft your motion. The court finds for infringement and for validity.

    Then, before the damages phase, the guilty bast8rd learned that your co-inventor (Just Another Ordinary Inventor :-)) committed fraud on the PTO during prosecution, and this fraud rises to the level of inequitable conduct. The guilty bast8rd moves the court to declare the patent unenforceable. The court makes such finding, and the guilty bast8rd walks away from you beaming from ear to ear. The court dismisses the case.

    Question 1: Do you still possess a patent that has the attributes of personal property including the right to exclude? Yes, nothing has affected your right created in the patent. In my opinion, you may write demand letters to other infringers, assert your valid patent, and enter into royalty agreements because you still possess a valid patent.

    Question 2: With your right to exclude, do you have the right to an injunction? Nope, your patent is unenforceable. Don’t expect any court to enforce your patent.

    In summary, there is a fundamental distinction between a right and a remedy to enforce that right.

    As far as Justice Thomas’ “presumptively” language, they presumed it for the sake of discussion. It’s like me saying, “Let’s presume, for the sake of argument, that_____ is true.” Then, after some discussion, concluded that their presumption was correct, and that injunctive relief “may be” available. He “presumed” for the sake of discussion only. Respectfully, I think you’re reading way too much into the “presumptively” language, and not seeing it in the bigger picture or context of the whole.

  21. Dear Jim H.,

    Perhaps this is unfair of me to mention because the press of my schedule will not permit me to comment further. I have another week or two’s work to perfect my Reply Brief in my first pro se suit, which is against a (non-patent related) government agency. However, I’ve studied your position regarding the eBay ruling and its possible relationship to Article III:

    Article. III. Section. 1.
    The judicial Power of the United States, shall be vested in one supreme Court, and in such inferior Courts as the Congress may from time to time ordain and establish. …
    Section. 2.
    Clause 1: The judicial Power shall extend to all Cases, in Law and Equity, arising under this Constitution, the Laws of the United States, …

    If you position is that patents must be adjudicated in essence equally as are all other “…Cases, in Law and Equity…” with all due respect, I don’t see it, and I believe I explained why this is not so in our dialogue:
    link to patentlyo.com

    Re:
    “While sections 154 and 283 might appear to be in tension, they are reconcilable.”

    I do not believe they are reconcilable unless there were to be an amendment to the Patent Clause. Even the eBay Court decision, page 3, only “presumed” the validity of 283:

    “To be sure, the Patent Act also declares that ‘patents shall have the attributes of personal property,’ §261, including ‘the right to exclude others from making, using, offering for sale, or selling the invention,’ §154(a)(1). According to the Court of Appeals, this statutory right to exclude alone justifies its general rule in favor of permanent injunctive relief. 401 F. 3d, at 1338. But the creation of a right is distinct from the provision of remedies for violations of that right. Indeed, the Patent Act itself indicates that patents shall have the attributes of personal property ‘[s]ubject to the provisions of this title,’ 35 U. S. C. §261, INCLUDING, PRESUMABLY, THE PROVISION THAT INJUNCTIVE RELIEF ‘MAY’ ISSUE ONLY “IN ACCORDANCE WITH THE PRINCIPLES OF EQUITY,” §283.” (emphasis added)

    The Supremes simply presumed wrong.

    As much as I am driven to get this eBay thing right, right now I blessed with sheer intellectual exhaustion & I intend to imbibe till my late supper and then take the rest of the weekend off.

  22. MM,

    From the opinion, each of the six patents have one inventor listed: one doctor is named on three of them, and another doctor is named on the other three. Also, the following is stated:

    “Serdarevic claimed to be the sole inventor of the subject matter claimed in the ’388 patent, and a co-inventor of the subject matter claimed in the other five.”

    Assuming the statement is true, I would agree that 102(f) provides the basis for an invalidity defense against of the ’388 patent. I’m not sure, however, if 102(f) would apply against the other five patents if she co-invented with the respectively named patentee.

  23. JJWilliams,

    I don’t know how the merits of an omitted inventor defense would play out because the other inventors still have an interest in patent rights. If there was intentional conducted rising to the level of fraud leading to the omission, then perhaps the defense would work.

    Perhaps an invalidity defense is more appropriate. If she did in fact invent that which is claimed, then her testimony could be used to invalidate the patent as she would be living prior art.

  24. Even though latches prevents her from asserting inventorship, it still is her invention (per her claim). She may not have a right to exclude others from making it (due to latches), but since it is her invention, Advanced Medical (AMO) should not be able to claim that right for themselves, even thought two other inventors were named. Dr. Serdarevic didn’t leave herself off as inventor of the filed patent application, someone else did. If I were sued by Advanced Medical for infringement of their patent, one of my defenses would be that they should have named all the inventors and, because they didn’t, their patent should be unenforcible. In general, I think it is better to mistakenly name an inventor rather than leave off an inventor.

  25. So, unfortunately for this assuredly meritorious plaintiff, whose case depended on the testimony of her alleged coinventors, she waited until …

  26. You cannot just sit on your rights. Assert them or lose them (or at least lose the enforceability of them).

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