Potter Instrument Co., Inc. v. Storage Technology Corp.

Decision Date23 February 1981
Docket NumberNo. 80-1428,80-1428
Citation641 F.2d 190,211 USPQ 493
PartiesPOTTER INSTRUMENT COMPANY, INC., Appellant, v. STORAGE TECHNOLOGY CORPORATION; Telex Computer Products, Inc.; Sperry Corporation; Control Data Corporation, Appellees.
CourtU.S. Court of Appeals — Fourth Circuit

David R. Murphy, Arlington, Va., for appellant.

Richard E. Kurtz, Philadelphia, Pa. (Woodcock, Washburn, Kurtz, Mackiewicz & Norris, Philadelphia, Pa., on brief) and Allen Kirkpatrick, Washington, D. C. (Cushman, Darby & Cushman, Washington, D. C., Alan E. J. Branigan, Griffin, Branigan & Butler, Harrison McCandlish, LeBlanc, Nolan, Shur & Nies, Arlington, Va., on brief), for appellees.

Before HAYNSWORTH, Chief Judge, FIELD, Senior Circuit Judge, and PHILLIPS, Circuit Judge.

HAYNSWORTH, Chief Judge:

Potter Instrument Co., Inc. filed in the district court separate suits against Storage Technology Corp., Control Data Corp., Sperry Corp., and Telex Computer Products, Inc., alleging infringement of two patents. Potter requested monetary, but not injunctive relief. The actions were consolidated for trial and the district court granted defendants' motions to dismiss on the grounds of equitable estoppel and laches.

This court has on occasion addressed the equitable doctrines of laches and estoppel in patent infringement suits. See Eastern Venetian Blind Co. v. Acme Steel Co., 188 F.2d 247, 254 (4th Cir. 1951); Baker-Cammack Hosiery Mills v. Davis Co., 181 F.2d 550, 564-68 (4th Cir. 1950); Fretwell v. Gillette Safety Razor Co., 106 F.2d 728, 730-31 (4th Cir. 1939); Hartford-Empire Co. v. Swindell Bros., 96 F.2d 227, 232-33, modified, 99 F.2d 61 (4th Cir. 1938); Denominational Envelope Co. v. Duplex Envelope Co., 80 F.2d 186, 193-94 (4th Cir. 1935). Those occasions have not invited comprehensive treatment of the subjects. Other courts, however, recently have surveyed the area. E. g., Studiengesellschaft Kohle v. Eastman Kodak Co., 616 F.2d 1315, 1325-28 (5th Cir. 1980); TWM Mfg. Co. v. Dura Corp., 592 F.2d 346 (6th Cir. 1979).

The laches defense "may be invoked where the plaintiff has unreasonably and inexcusably delayed in prosecuting its rights and where that delay has resulted in material prejudice to the defendant." Eastman Kodak, 616 F.2d at 1325.

The district court found that Potter should have known of the alleged infringement of the '894 patent for more than six years before it filed suit. A delay of six years triggers a presumption that the delay was unreasonable and that the defendant was prejudiced. Eastman Kodak, 616 F.2d at 1326; TWM Mfg. Co., 592 F.2d at 348-40. The district court considered and rejected each of the justifications which Potter offered for the delay.

With respect to the '685 patent, the delay in filing suit was slightly less than six years. The district court nonetheless found that the delay was unreasonable and that the defendants were prejudiced.

The invocation of the estoppel or laches doctrines is within the sound discretion of the district court and will be reversed only if clearly erroneous. Eastman Kodak, 616 F.2d at 1325. Because we do not find clear error, we affirm the dismissal on the laches ground.

The district court also held that Potter "ought to...

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