Appeal from the United States District Court for the Eastern District of Virginia in No. 2:12-cv-00592-MSD-LRL, Judge Mark S. Davis.
FRANK PORCELLI, Fish & Richardson, P.C., Boston, MA, argued for plaintiff-appellant.
DOUGLAS A. DOZEMAN, Warner Norcross & Judd LLP, Grand Rapids, MI, argued for defendants-appellees. Also represented by AMANDA M. FIELDER.
Before LOURIE, REYNA, and CHEN, Circuit Judges.
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 is a German company that manufactures welding equipment, including welding contact tips for use in metal inert gas welding. Binzel-Germany is the owner of German Patent No. 197 37 934 (DE '934 patent) filed on August 30, 1997, which serves as the priority document for a PCT application filed in 1998. Binzel-Germany also owns the patent at the heart of this dispute, United States Patent No. 6,429,406 (the '406 patent), entitled " contact tip." The '406 patent, which issued in 2002 to Mr. Sattler, claims priority to the 1998 PCT application. The claims of the '406 patent are generally directed to a method of manufacturing a contact tip for use in metal inert gas welding. The '406 patent explains that this process is more cost-effective than prior art methods.
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 its patent application on August 30, 1997, and one year later, on August 13, 1998, Binzel-Germany filed PCT Application No. PCT/EP98/05138 covering the same method of manufacturing contact tips. As with the DE '934 patent application, Binzel-Germany did not identify Mr. Lismont as an inventor on its PCT Application. This PCT Application resulted in issued patents in numerous countries, including the '406 patent in the United States.
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. The letter further stated that if Binzel-Germany did not respond by July 5, 2002, Mr. Lismont would " initiate the necessary legal steps without further notice." Id. Neither Mr. Sattler nor Binzel-Germany responded. Accordingly, in December 2002, Mr. Lismont filed a second action in Germany (Second German Litigation) against Binzel-Germany, Abicor, and Mr. Sattler, seeking damages related to his inventorship claim. The complaint in the Second German Litigation also sought information about the countries in which Binzel-Germany was pursuing patents and information about the manufacture and sales of contact tips that used the method disclosed in the DE '934 patent.
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 judgment in ...