Today's lesson for litigators: make sure you present all your arguments to the district court

In a decision Tuesday, the Federal Circuit affirmed a district court's holding that two patents were invalid under the on-sale bar of 35 U.S.C. § 102(b).  The inventor filed a declaration during prosecution that the invention was reduced to practice before the critical date of the patents, and thereafter sold the claimed method, also before the critical date.  The post-reduction to practice sales could not be considered experimental use, as once an invention is reduced to practice, experimental use is no longer possible.  Further, there was insuffucient evidence to call the inventor's declaration into question.  On this point, the plaintiff attempted to rely upon additional evidence not presented to the district court in opposition to the defendants' summary judgment motion.  The Federal Circuit rebuffed this attempt, limiting the plaintiff on appeal to the evidence presented to the district court in opposition to the summary judgment motion.  As a result, the court affirmed the finding of invalidity.

The Federal Circuit further affirmed the district court's dismissal of the plaintiff's trade secret claims as barred under the statute of limitations.  The court held the plaintiff had sufficient information to allege trade secret misappropriation at least as early as 1996, but did not file suit until 2005, well outside the applicable 3-year limitations period.  Accordingly, dismissal of the trade secret claims was proper.

More concerning In re Cygnus Telecomms. Tech., LLC, Patent Litig. after the jump. 


Purported inventor who waited eight years to file suit could not overcome presumption of laches

In a decision yesterday, the Federal Circuit upheld a district court's grant of summary judgment due to laches and applicable state statute of limitations in an inventorship case. The plaintiff, having waited more than eight years after finding out about the patents to file suit, claimed that an intervening reexamination should have reset the time for determining laches and that the defendant's "unclean hands" in failing to include the plaintiff as an inventor precluded the application of laches. The court held that "there is no rule that the issuance of a reexamination certificate automatically resets the six-year clock for the presumption of laches" and that a plaintiff relying on "unclean hands" to defeat laches must show that "the defendant's misconduct was responsible for the plaintiff's delay in bringing suit."

More detail of Serdarevic v. Adv. Med. Optics, Inc. after the jump.


First Circuit: Discovery rule not triggered in copyright case by parties' acrimonious split

In a recent decision, the First Circuit reversed a district court's decision dismissing a copyright infringement claim on statute of limitation grounds.   The main issue was whether the statute of limitations for copyright infringement claims barred an architectural firm's action against a former client. 

The court determined that no triggering event had occurred which would put the plaintiff on inquiry notice of the claimed infringement outside the three-year statute of limitations.  The court said a frayed relationship between the client and the firm did not give rise "to a reasonable suspicion that skullduggery was afoot."  Because the plaintiff was not on inquiry notice (and did not have actual notice outside the limitations period), the district court's dismissal of the copyright infringement claim was reversed.

The court then affirmed the district court's grant of summary judgment dismissing the defendant's counterclaims.  These counterclaims were all based on the defendant having sole ownership of the plans.  The court found no plausible way for the defendant to claim sole ownership, either under the work-for-hire doctrine or otherwise.

Interesting tidbits:  The opinion was written by Senior Circuit Judge Bruce Selya, well-known for his extensive vocabulary.  This opinion did not disappoint, using words such as "quondam," "tamisage" (a word so uncommon no online definition could be located, although Judge Selya has used it before), and "asseverate."  Also, retired Supreme Court Justice Sandra Day O'Connor sat on the panel.

More on Warren Freedenfeld Assocs., Inc v. McTigue after the jump.


First Circuit: Copyright statute of limitations applies to accounting claims between joint authors

In a decision last week, the First Circuit held that a purported assignee of a joint author of a copyrighted work was barred by the Copyright Act's three-year statute of limitations from seeking an accounting of profits, even though the state statute of limitations for seeking such an accounting had not yet run.

The plaintiff had purportedly acquired rights in a copyrighted work, Das Hummel-Buch. from the heirs of a joint author of the work, and brought suit for an accounting of profits on the original work and deriviative works, commonly known as Hummel figurines.  However, the plaintiff could only assert the state law claim if it first established its ownership interest in the copyright.  As a result, because copyright ownership was an essential first determination in the matter at hand, the Copyright Act's three-year statute of limitations applied, barring the claim, even though the applicable state statute of limitations had not expired.

More detail of Cambridge Literary Props., Ltd. v. W. Goebel Porzellanfabrik G.m.b.H. after the jump.


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