Wednesday, February 20, 2008

ND Cal.: Late Claim for Inventorship Barred by Laches

Mark Moore v. Broadcom Corp. (c06-05647), February 12, 2008

While working at Intermec, Inc., inventor Beard filed for a provisional application in 1997 that was ultimately converted and issued as a U.S. patent. Right around the same time, Beard was collaborating with Moore to start a new venture, and they discussed various concepts that were subsequently patented. During their discussions, Moore was shown Beard's provisional patent, in which Beard was listed as the sole inventor. Beard later assigned his patent to Intermec.

After a series of assignments, Broadcom became the sole owner of the Beard patent.

In 2006, Moore sued Beard and Broadcom seeking to be declared a co-inventor of the Beard patent, and also sought damages for unjust enrichment. The defendants moved for summary judgment, arguing that Moore's claim was barred by laches.

Relying on the CAFC's Aukerman and Advanced Cardiovascular decisions, the district court acknowledged that laches would be presumed upon proof that the omitted inventor delayed filing suit for more than 6 years after actual or constructive knowledge.

The Court first determines if the presumption of laches applies to the instant case. In infringement actions, the period of delay “is measured from the time the plaintiff knew or reasonably should have known of the defendant’s alleged infringing activities to the date of suit” but cannot begin prior to the issuance of the patent. Aukerman, 960 F.2d at 1032. However, in cases for correction of inventorship, the Circuit has held that “[w]hen applying the equitable doctrine of laches in order to bar a claim, the period of delay is measured from when the claimant had actual notice of the claim or would have reasonably been expected to inquire about the subject matter” and not from the date of the issuance of the patent. See Advanced Cardiovascular Systems, 988 F.2d at

Here, Defendant Beard provided Moore with a copy of the provisional application around December 31, 1997, the date that the provisional application was filed. Moore was aware of the contents of the provisional application on or about December 31, 1997, and was aware that he was not named as an inventor on the provisional application. Thus, Defendants argue, more than eight years passed between the moment Plaintiff knew, or reasonably should have known, that Defendants had filed an application for a patent on the invention, and failed to name him, and the time Plaintiff filed suit.
Expanding upon Advance Cardiovascular, where the omission was discovered after the patent had issued, the district court stated that,

While not discussed in Advanced Cardiovascular Systems, pursuant to 35 U.S.C. § 116, correction of inventorship may be accomplished prior to the issuance of a patent by application to the commissioner. See 35 U.S.C. § 116; 37 C.F.R. § 1.48. In addition, an action to correct inventorship while the patent application is still pending, under 35 U.S.C. § 116, includes the requirement that such amendment must be diligently made . . . The requirement of diligence supports a finding that delay is discouraged, and laches may apply, even at these early stages. Thus, the rationale of Advanced Cardiovascular Systems, that laches may apply at any time that inventorship may be remedied but should not apply before the omitted inventor has learned of the claim, applies in equal force to the time during which a patent application is pending, but before it is issued.
Applying the presumption of laches, the district court found that Moore could not overcome the presumption, and granted summary judgment in favor of the defendants.

Read/download the opinion here (link)

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