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The court affirmed the district court’s grant of summary judgment that Mr. Lismont’s request to correct the inventorship on Binzel’s patent was precluded under the doctrine of laches.  There is a rebuttable presumption that laches applies where the delay is greater than 6 years.  Here, the patent is suit issued in 2002, and Mr. Lismont waited for more than 10 years to request a correction of inventorship.  Mr. Lismont contended that the presumption should not apply, because he was prosecuting similar claims for corrected inventorship in Germany for the German patent.  The court held that acts taken in German with respect to a German patent are irrelevant to the U.S. patent and therefore the presumption applied. 

Lismont then argued that the fact that he was prosecuting claims in German should be sufficient to overcome the presumption of laches.  The court held, however, that, for other litigation to excuse a plaintiff’s delay, the defendant must have adequate notice of the other proceedings as well as notice of the patentee’s intention to pursue its patent rights upon completion of the other proceedings.  Lismont did not overcome the presumption of laches, because he could not prove that he had given Binzel notice that he intended to commence legal proceedings in the U.S. to correct inventorship following the German litigation.  

Lismont v. Alexander Binzel Corporation, Case No. 2014-1846 (February 16, 2016); Opinion by: Chen, joined by Lourie and Reyna; Appealed From: United States District Court for the Eastern District of Virginia, Davis, J.  Read the full opinion here.

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