CHEN, Circuit Judge.
This appeal arises from an inventorship dispute between Hedwig Lismont (Mr. Lismont) and Alexander Binzel Schweisstechnik GmbH & Co. KG (Binzel-Germany), Abicor Unternehmensverwaltungs GmbH (Abicor), IBG Industrie-Beteiligungs-GmbH & Co. KG (IBG), Richard Sattler (Mr. Sattler), and Alexander Binzel Corporation (Binzel-USA) (collectively, Appellees). The United States District Court for the Eastern District of Virginia granted summary judgment in favor of Appellees, concluding that Mr. Lismont's inventorship claim, which he filed ten years after the patent issued, was barred by laches. See Lismont v. Alexander Binzel Corp., No. 2:12-cv-592, 2014 WL 4181586 (E.D. Va. Aug. 20, 2014). Because we agree with the district court's conclusion that the presumption of laches applies against Mr. Lismont's claim and that he failed to rebut that presumption, we affirm.
Mr. Lismont is a resident and citizen of Belgium. Binzel-Germany
Mr. Lismont asserts that, beginning in 1995, he developed the method of manufacturing contact tips disclosed in both the DE '934 patent and the '406 patent in response to Binzel-Germany's request for assistance in developing a lower-cost manufacturing process. Mr. Lismont further alleges that by mid-1997, he had fully developed his proposed manufacturing process and disclosed the details of the process to Binzel-Germany. Mr. Lismont also contends that, despite numerous representations from Binzel-Germany that he was the first to conceive of this method, Binzel-Germany filed the DE '934 patent application naming Mr. Sattler, a Binzel-Germany employee, as the inventor, rather than Mr. Lismont. Binzel-Germany filed
On October 13, 2000, two years after the DE '934 patent issued, Mr. Lismont initiated litigation against Binzel-Germany in the German Regional Federal Court in Frankfurt, Germany (First German Litigation). In this litigation, Lismont maintained that he was the sole inventor of the subject matter disclosed in the DE '934 patent and therefore sought to change inventorship on the German patent.
In addition, on June 24, 2002, Mr. Lismont's attorneys sent a letter to the named inventor of the DE '934 patent, Mr. Sattler, demanding damages for his purportedly false declarations of inventorship. The letter noted that Binzel-Germany had filed a patent application in the United States Patent and Trademark Office (PTO) and explained that, if Mr. Lismont did not receive compensation for his contribution toward inventing the claimed method, he would be "extensively assessing and pursuing your conduct and actions from every legal perspective." Joint Appendix (J.A.) 1554.
Ultimately, the German courts ruled against Mr. Lismont in both cases for essentially the same reasons: that he failed to prove that he had an inventorship interest in the DE '934 patent. Specifically, on December 18, 2008, the German court concluded that Mr. Lismont had not proven that he was either the sole inventor or a joint inventor of the inventive process disclosed in the DE '934 patent. Mr. Lismont appealed this decision to the German Supreme Court, which rejected his appeal on November 25, 2009. After losing his inventorship claim and his related claim for damages, Mr. Lismont also filed actions in the German Federal Constitutional Court and in the European Court of Human Rights. These two cases were not appeals from the German Supreme Court's rejection of his appeal, but were separate actions claiming that the earlier proceedings amounted to a denial of basic due process in violation of his constitutional or human rights, respectively.
On October 31, 2012, twelve years after Mr. Lismont initiated the First German Litigation, he initiated the underlying litigation seeking, among other things, to correct inventorship of the '406 patent under 35 U.S.C. § 256(a). After the parties engaged in discovery tailored to the issue of laches, Appellees filed a motion for summary judgment asserting that Mr. Lismont's inventorship claim was barred by laches. The district court agreed and entered
"Laches is an equitable defense that may bar an inventorship claim." Serdarevic v. Advanced Med. Optics., Inc., 532 F.3d 1352, 1358 (Fed.Cir.2008). To prevail on a defense of laches, a defendant must establish that (1) the plaintiff's delay in filing a suit was "unreasonable and inexcusable"; and (2) the defendant suffered "material prejudice attributable to the delay." A.C. Aukerman v. R.L. Chaides Constr. Co., 960 F.2d 1020, 1028 (Fed.Cir. 1992) (en banc); see also SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC, 807 F.3d 1311, 1317 (Fed.Cir. 2015) (en banc). Further, a rebuttable presumption of laches attaches whenever more than six years passes from the time a purportedly omitted inventor knew or should have known of the issuance of the relevant patent. Advanced Cardiovascular Sys., Inc. v. Scimed Life Sys., Inc., 988 F.2d 1157, 1163 (Fed.Cir.1993); Serdarevic, 532 F.3d at 1358. This presumption of laches may be rebutted if the plaintiff "offer[s] evidence to show an excuse for the delay or that the delay was reasonable" or by offering "evidence sufficient to place the matters of defense prejudice and economic prejudice genuinely in issue." Aukerman, 960 F.2d at 1038.
Here, the district court concluded at the summary judgment stage that Mr. Lismont's inventorship claim was barred by laches. We review the grant of summary judgment under the law of the regional circuit. Charles Mach. Works, Inc. v. Vermeer Mfg. Co., 723 F.3d 1376, 1378 (Fed.Cir.2013). The Fourth Circuit generally reviews the grant or denial of summary judgment de novo. See Myers v. Finkle, 950 F.2d 165, 167 (4th Cir.1991). Summary judgment is appropriate when "there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R.Civ.P. 56(a). The issue of laches, however, "is committed to the sound discretion of the district court." Aukerman, 960 F.2d at 1032. Because the factors underlying a laches determination—unreasonable delay and prejudice—are factual in nature, genuine issues of material fact as to these factors will preclude summary judgment in favor of the defendant. For this reason, "[w]hen reviewing a laches decision rendered on summary judgment, this court reviews for an abuse of discretion unless genuine issues of material fact preclude summary judgment." Pei-Herng Hor v. Ching-Wu Chu, 699 F.3d 1331, 1334 (Fed.Cir.2012).
If the presumption of laches attaches, a plaintiff may defeat summary judgment by "rais[ing] a genuine dispute as to either delay or prejudice." Hemstreet v. Comput. Entry Sys. Corp., 972 F.2d 1290, 1293 (Fed.Cir.1992). If the plaintiff makes such a showing, the presumption dissolves and the defendant is then "put to its proof on both factors" and "must affirmatively prove (1) unreasonable and inexcusable delay and (2) prejudice resulting from that delay." Id. If, however, we agree with the district court that there are no genuine issues of material fact, we may set aside the imposition of laches if "the decision rests on an erroneous interpretation of the law or on clearly erroneous factual underpinnings." Serdarevic, 532 F.3d at 1358; see also Ray Commc'ns, Inc. v. Clear Channel Commc'ns, Inc., 673 F.3d 294, 299 (4th Cir.2012) ("The court has abused its discretion if its decision is guided by erroneous legal principles or rests upon a clearly
On appeal, Mr. Lismont first asserts that the district court should not have applied the laches presumption against his inventorship claim. Alternatively, Mr. Lismont seems to argue that his litigation in the German and European courts served as notice to Binzel-Germany that an inventorship suit in the United States was likely forthcoming and thus was sufficient to excuse his delay and rebut the presumption of laches. We address each argument in turn.
The district court found, based on a statement made by Mr. Lismont to the German court, that Mr. Lismont undisputedly knew by February 12, 2001, that Binzel-Germany and/or Mr. Sattler had already filed the application that eventually issued as the '406 patent. Because Mr. Lismont knew of the application before the '406 patent issued, the district court concluded that the laches clock started to run when the '406 patent issued on August 6, 2002. See Pei-Herng Hor, 699 F.3d at 1335 ("[T]he laches clock [can]not start to run—at the earliest—until the patent issue[s]."). More than ten years later, on October 31, 2012, Mr. Lismont initiated the present action. Given that this delay exceeded six years, the district court found that the rebuttable presumption of laches attached. Serdarevic, 532 F.3d at 1358 ("`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.'" (quoting Advanced Cardiovascular Sys., 988 F.2d at 1163)).
Mr. Lismont argues that 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. Mr. Lismont further asserts that he specifically sought resolution of the '406 patent inventorship issue in the Second German Litigation when he requested "worldwide damages, including in the U.S., and a worldwide declaration of liability, including in the U.S." Appellant Br. 25. Thus, according to Mr. Lismont, the parties have been litigating inventorship of the '406 patent in Germany since he filed the Second German Litigation in 2002 and the presumption of laches is therefore inappropriate.
We disagree. 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. See Aukerman, 960 F.2d at 1034. As the district court correctly recognized, Mr. Lismont was aware that Binzel-Germany had filed a U.S. patent application covering the manufacturing method he allegedly invented before the '406 patent issued. Accordingly, to avoid the imposition of the rebuttable laches presumption, Mr. Lismont should have filed his United States inventorship litigation within six years of August 6, 2002, the date on which the patent issued. Because it is undisputed that he waited more than ten years from that date to initiate this litigation, the district court correctly found that the presumption of laches attached.
As to Mr. Lismont's contention that he was attempting to correct the inventorship of the '406 patent in his foreign litigation, he has not pointed to any allegations in his German or European litigations in which he sought to correct the inventorship of the '406 patent.
For these reasons, Mr. Lismont's argument that he was continuously litigating the issue of inventorship of the Binzel-Germany's United States patent fails. We therefore affirm the district court's conclusion that a presumption of laches was appropriate in this case.
Although Mr. Lismont's litigation abroad may not be used to avoid a presumption of laches, it may help to rebut that presumption. Serdarevic, 532 F.3d at 1359-60 (holding that one option for overcoming the presumption of laches is to rebut it with "evidence to show an excuse for the delay or that the delay was reasonable").
For other litigation to excuse a plaintiff's delay, however, the defendant must have adequate notice of the other proceedings as well as plaintiff's intention to pursue its patent rights upon completion of the other proceedings. Vaupel, 944 F.2d at 877. "What is important is whether [the defendant] had reason to believe it was likely to be sued." Id. at 878. For example, in Vaupel, we found that a plaintiff's delay in filing suit could be excused by its engagement in reissue proceedings in which the defendant participated so long as "the evidence as a whole show[ed] that the accused infringer was in fear of suit." Id. Specifically, the evidence in Vaupel supported the conclusion that the infringer was in fear of suit based on (i) a letter sent by the plaintiff to the defendant declaring that it would "protect its [U.S. patent] and look after our rights" and requesting discussions with the defendant before "plunging into court proceedings"; (ii) a letter sent by the defendant to the PTO during the reissue proceedings acknowledging the "continued threats of infringement"; and (iii) a letter sent by the defendant to the plaintiff during the same time period threatening a declaratory judgment action. Id. We thus found that the defendant was sufficiently aware of the threat of litigation upon completion of the reissue proceedings. Id.
Although the "other litigation" excuse is typically invoked when a plaintiff is serially asserting its patents against different defendants, in circumstances like those presented in this case, the defendant in the foreign litigation must likewise receive adequate notice that the plaintiff intends to later pursue its rights under United States patents after termination of the proceedings in the foreign jurisdiction. We agree with the district court that the mere initiation of patent litigation in a foreign jurisdiction and the existence of United States patents are not sufficient to notify a defendant that the plaintiff will eventually seek to assert its patent rights in the United States.
Mr. Lismont points to three possible sources of the requisite notice.
Next, Mr. Lismont relies on the June 2002 Letter to Mr. Sattler. In this letter, he (i) noted the filing of a U.S. patent application naming Mr. Sattler as the inventor; (ii) advised that Mr. Lismont would "carefully examine and prosecute your conduct and actions in all legal respects"; and (iii) notified Mr. Sattler that failure to pay damages would result in the initiation of "appropriate legal action with no further notification." J.A. 1396-97. Again, this communication lacks any indication that Mr. Lismont intended to commence legal proceedings to correct inventorship in the United States.
Mr. Lismont's request in Germany for "worldwide damages" does not alter this conclusion. There are no assertions in the complaint filed in the Second German Litigation indicating that Mr. Lismont was pursuing the issue of inventorship as to the '406 patent. More importantly, there are no assertions in the complaint that could serve to notify Binzel-Germany that this issue would eventually be litigated in the United States if left unresolved upon conclusion of the litigation abroad.
Thus, because the plaintiff did not provide any notice to the defendants in a foreign patent dispute that it would pursue litigation in the courts of the United States against the same defendants upon termination of the foreign litigation, it is not an abuse of discretion to find that laches bars the later claim.
For these reasons, we conclude that the district court correctly imposed the presumption of laches and properly determined that Mr. Lismont had not presented any genuine issues sufficient to rebut the presumption. We therefore hold that the district court did not abuse its discretion when it held Mr. Lismont's claim barred by laches.
No Costs.
