Foreign Litigation Does Not Defeat Presumption Of Laches

Author:Ms Natalie Bennett
Profession:McDermott Will & Emery

Lismont v. Alexander Binzel Corp. Addressing laches issues in the context of a multi-jurisdictional dispute, the US Court of Appeals for the Federal Circuit affirmed a summary judgment ruling that the plaintiff's correction of inventorship lawsuit was barred by the doctrine of laches. Lismont v. Alexander Binzel Corp., Case No. 14-1846 (Fed. Cir., Feb. 16, 2016) (Chen, J).

Mr. Hedwig Lismont resides in Belgium. He asserts that in 1995 he began developing a manufacturing process at the request of welding equipment manufacturer Binzel-Germany. According to Mr. Lismont, after he disclosed the details of his manufacturing process to Binzel, the company began filing patent applications naming a Binzel employee, and not Mr. Lismont, as the inventor. Three filings are of relevance:

A German patent A Patent Cooperation Treaty (PCT) application claiming priority from the German patent A US patent claiming priority from the PCT application The US patent is directed to a cost-effective method of manufacturing a contact tip for use in metal inert gas welding.

Mr. Lismont first filed a lawsuit in Germany in 2000 alleging that he was the true inventor of the German patent. He filed a second suit with similar allegations in 2002. The German lawsuits were eventually decided against Mr. Lismont, with the courts concluding that he failed to prove his inventorship interest.

In 2012, Mr. Lismont sought correction of inventorship with respect to the US patent by bringing a lawsuit in the United States under 35 USC § 256. After limited discovery, Binzel moved for summary judgment that the claim was barred by laches since Mr. Lismont knew of the PCT application that precipitated the issuance of the US patent in 2002, yet waited 10 years before initiating a lawsuit in the United States.

The district court granted the motion, finding Mr. Lismont's inventorship claim barred by laches. The district court concluded that the rebuttable presumption of laches would attach since more than six years had passed between the filing of the lawsuit and the time Mr. Lismont knew or should have known of the US patent's issuance. The district court further concluded that Mr. Lismont failed to rebut the presumption of laches with evidence that the delay...

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