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The Six-Year Clock for the Presumption of Laches Keeps Ticking Past the Issuance of a Reexamination Certificate


In Serdarevic v. Advanced Medical Optics, Inc. (No. 08-1075, July 16, 2008), the Federal Circuit affirms a summary judgment that a claim of inventorship is barred by laches where the plaintiff filed suit less than six years after the issuance of a reexamination certificate but more than six years from the original grant of the patent.

According to the Federal Circuit, the issuance of a reexamination certificate does not automatically reset the six-year clock for the presumption of laches. The mere possibility that the claims of a patent may be amended to affect an inventorship claim does not excuse a delay in bringing suit. Because the plaintiff asserted her claim nearly eight years after learning of the issuance of the six patents in suit, even though one had undergone reexamination, the Court concludes that the district court properly applied the presumption of laches.

The Federal Circuit agrees that, in the absence of evidence that the delay was reasonable or excusable or that the defendants did not suffer material prejudice due to the delay, the plaintiff failed to rebut the presumption of laches. Unfamiliarity with the U.S. patent system, an inability to obtain willing legal counsel, and efforts to license one's inventorship rights do not suffice to rebut the presumption that the delay was unreasonable or inexcusable. As to material prejudice, although the plaintiff was willing to forego reliance on three deceased witnesses who had knowledge of the inventorship claim, such willingness did not reverse the prejudice suffered by the defendants in their ability to present a full and fair defense on the merits.


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Mark Supko
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