In re Stuart R. Meyers Patent Litigation

• Decision Date: 06 March 1990
• Docket Number: 88 Civ. 7404 (RO) and 89 Civ. 5699 (RO).,MDL No. 777. No. 88 Civ. 7401 (RO)
• Citation: 731 F. Supp. 640
• Parties: In re STUART R. MEYERS PATENT LITIGATION. Stuart R. MEYERS, Plaintiff, v. ASICS TIGER CORP., Defendant. Stuart R. MEYERS, Plaintiff, v. HYDE ATHLETIC INDUSTRIES, Defendant. Stuart R. MEYERS, Plaintiff, v. ASICS CORP., Defendant.
• Court: U.S. District Court — Southern District of New York

731 F. Supp. 640

In re STUART R. MEYERS PATENT LITIGATION.

Stuart R. MEYERS, Plaintiff, v. ASICS TIGER CORP., Defendant.

Stuart R. MEYERS, Plaintiff, v. HYDE ATHLETIC INDUSTRIES, Defendant.

Stuart R. MEYERS, Plaintiff, v. ASICS CORP., Defendant.

MDL No. 777. Nos. 88 Civ. 7401 (RO), 88 Civ. 7404 (RO) and 89 Civ. 5699 (RO).

United States District Court, S.D. New York.

March 6, 1990.

Ostrolenk, Faber, Gerb & Soffen, New York City, for plaintiff; Robert C. Faber, Samuel H. Weiner, Steven I. Weisburd and William O. Gray, III, of counsel.

Christie, Parker & Hale, Pasadena, Cal., for defendant Asics Tiger Corp.; Carl Kustin, of counsel.

Wolf, Greenfield & Sacks, Boston, Mass., for Hyde Athletic Industries; David Wolf, John L. Welch and Warren A. Kaplan, of counsel.

Dike, Bronstein, Roberts & Cushman, Boston, Mass., for defendant Asics Corp.; Gregory D. Williams, of counsel.

OPINION AND ORDER

OWEN, District Judge:

Plaintiff Stuart Meyers holds three patents for cushioned running shoe insole designs, issued in 1981, 1984 and 1986 respectively. The issue raised by this motion is whether plaintiff's patent claims against these two shoe manufacturers, Hyde Athletic Industries and Asics Corporation, and against Asics Tiger Corp. ("ATC"), a retailer and subsidiary of Asics, are barred by laches and equitable estoppel. In a related suit by plaintiff alleging patent infringement by two other manufacturers, this Court granted summary judgment for defendants based on laches and estoppel. Meyers v. Brooks Shoe, Inc., 721 F.Supp. 588 (1989).

The relevant facts in this case are similar to those in Brooks. Defendants advertise and sell various athletic shoes in the United States. Plaintiff's deposition testimony indicates he became aware of various models of defendants' shoes and began testing them for infringement by late 1982.

Plaintiff contacted ATC in 1983 and suggested it negotiate a license with him.¹ By 1984, Plaintiff had asserted in phone calls and a letter to ATC's attorney that several ATC models infringed two existing patents, as well as a third patent application subsequently granted in 1986.² ATC evaluated plaintiff's claims, decided there was no infringement, and declined to negotiate with him. Save for one letter from plaintiff's attorney to ATC in January 1985 rebutting ATC's conclusions,³ to which ATC did not reply, plaintiff and ATC had no further contact until he filed this action in May of 1988.

Plaintiff also contacted Hyde in 1983, inviting Hyde to enter into licensing negotiations.⁴ Hyde made the same determinations that ATC had with respect to alleged infringements and, in a letter to plaintiff, declined to enter into license negotiations.⁵ Hyde also had no further contact with plaintiff until this action was filed. Throughout this period, plaintiff had no contacts with ATC's parent corporation, Asics.

To prevail on a claim of laches, a defendant must prove that the plaintiff unreasonably and inexcusably delayed in asserting an infringement claim and that material prejudice to the defendant resulted from the delay. Jamesbury Corp. v. Litton Industrial Products, Inc., 839 F.2d 1544, 1551-52 (Fed.Cir.), cert. denied, ___ U.S. ___, 109 S.Ct. 80, 102 L.Ed.2d 57 (1988).⁶ The usual starting point for the laches period, "the time patentee knew, or in the exercise of reasonable diligence should have known, of the alleged infringing activity," Jamesbury, 839 F.2d at 1552, is tolled when the parties engage in ongoing licensing negotiations. MGA, Inc. v. Centri-Spray Corp., 639 F.Supp. 1238, 1243 (E.D.Mich.1986). However, as in Brooks, I reject plaintiff's argument that the 1983 "negotiations" tolled the laches period. The contacts between plaintiff and defendants were sporadic, and none of the defendants indicated they were prepared to pursue negotiations to a successful conclusion. In fact, plaintiff's inquiries to defendants regarding licensing constituted no more than offers to negotiate on the part of the plaintiff, an offer defendants refused.

Defendants have sustained their burden of showing plaintiff's delay was unreasonable and resulted in prejudice. Plaintiff's claim that his delay was due to his inability to retain a law firm is a "sufficient showing of unreasonability of delay by plaintiff and prejudice to defendant." Standard Oil Co. v. Rohm and Haas Co., 589 F.Supp. 264, 265 (S.D.Tex.1984), aff'd, 754 F.2d 345 (Fed.Cir.1985).

Moreover, plaintiff's delay has caused defendants extreme prejudice. From the early 1980s, when plaintiff first became aware of defendants' allegedly infringing patents, until 1988, when plaintiff finally brought suit, defendants had developed many more shoes incorporating the allegedly infringing design. In addition, a number of key witnesses, including designers and managers, are no longer in defendants' employ or available. See Meyers v. Brooks Shoe, Inc. (citing Lemelson v. Carolina Enterprises, Inc., 541 F.Supp. 645, 656-58 (S.D.N.Y.1982); Advanced Hydraulics, Inc. v. Eaton Corp., 415 F.Supp. 283, 284-85 (N.D.Ill.1976); Lukens Steel Co. v. American Locomotive Co., 197 F.2d 939 (2d Cir.1952)). Given defendants' prejudice, plaintiff is barred from recovering damages under the doctrine of laches.

Turning to the issue of equitable estoppel, this doctrine requires that defendants prove the two elements of laches plus "affirmative conduct" inducing detrimental reliance. Jamesbury Corp. v. Litton Industrial Products, Inc.; Studiengesellschaft Kohle, m.b.H. v. Dart Industries, Inc. 726 F.2d 724 (Fed.Cir.1984). Defendants already have satisfied their burden with respect to laches. Furthermore, as in Brooks, I find that plaintiff's sudden prolonged silence of several years after his initial aggressive advocacy of his purported claims was so misleading as to amount to bad faith. Plaintiff had no contact whatsoever with Hyde from 1983 until 1988, with ATC from 1985 until 1988, and with Asics at any time. Such silence could only convey the impression that plaintiff knowingly had abandoned any alleged claims. Defendants therefore properly relied on this impression while undertaking the extensive development and marketing plaintiff now seeks to enjoin.

Finally, I again reject plaintiff's contentions that he could not bring suit until the...