Serdarevic v. Advanced Medical Optics, Inc.

• Decision Date: 16 July 2008
• Docket Number: No. 2008-1075.,2008-1075.
• Parties: Olivia N. SERDAREVIC, M.D., Plaintiff-Appellant, v. ADVANCED MEDICAL OPTICS, INC., Stephen L. Trokel, M.D., and VISX, Inc., Defendants-Appellees, and Francis A. L'Esperance, Jr., M.D., Defendant-Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

532 F.3d 1352

Olivia N. SERDAREVIC, M.D., Plaintiff-Appellant, v. ADVANCED MEDICAL OPTICS, INC., Stephen L. Trokel, M.D., and VISX, Inc., Defendants-Appellees, and Francis A. L'Esperance, Jr., M.D., Defendant-Appellee.

No. 2008-1075.

United States Court of Appeals, Federal Circuit.

July 16, 2008.

Ira S. Sacks, Dreier LLP, of New York, NY, argued for plaintiff-appellant. Of counsel was Gerard F. Diebner.

Roger J. Chin, Wilson Sonsini Goodrich & Rosati, of Palo Alto, CA, argued for defendants-appellees Advanced Medical Optics, Inc., et al. With him on the brief was Ron E. Shulman.

Steven Mancinelli, Codispoti & Mancinelli, LLP, of New York, NY, argued for defendant-appellee Francis A. L'Esperance, Jr., M.D.

Before MICHEL, Chief Judge, LINN, Circuit Judge, and ZAGEL, District Judge.^*

LINN, Circuit Judge.

In this case, we are called upon to resolve several issues relating to a claim by Olivia N. Serdarevic ("Serdarevic") that she is the inventor or co-inventor of technology related to laser vision correction disclosed in six United States patents issued between 1987 and 1998. Serdarevic brought suit on September 15, 2006, against the current owner of the patents, its corporate parent, and the named inventors, seeking correction of inventorship and alleging state-law claims of unjust enrichment and fraud against the named inventors. The district court granted the defendants' motions for summary judgment on the basis of laches and the applicable state statutes of limitations. Serdarevic v. Advanced Med. Optics, Inc., 06-CV-7107, 2007 WL 2774177 (S.D.N.Y. Sept. 25, 2007).

We conclude that the district court did not abuse its discretion by holding that Serdarevic's inventorship claim was barred by laches. We likewise conclude that the district court correctly determined that Serdarevic's state-law claims were barred by the applicable statutes of limitations. Finally, we conclude that the district court did not abuse its discretion by denying Serdarevic's motion for discovery under Federal Rule of Civil Procedure 56(f) on either her laches claim or her state-law claims. We therefore affirm.

I. BACKGROUND

Serdarevic is a physician who did her residency in the early 1980s at the Edward S. Harkness Eye Institute at Columbia Presbyterian Medical Center ("Harkness"). At the time of her residency, defendants Francis A. L'Esperance, Jr. ("L'Esperance") and Stephen L. Trokel ("Trokel") were ophthalmologists and attending physicians at Harkness.

Serdarevic claims that during her residency she invented the technology claimed in six patents: U.S. Patent No. 4,665,913; U.S. Patent No. 5,108,388 ("the `388 patent"); U.S. Patent No. 5,188,631; U.S. Patent No. 5,207,668; U.S. Patent No. 5,711,762; and U.S. Patent No. 5,735,843 (collectively, the "patents-in-suit"). L'Esperance is the sole inventor named on three of the patents, and Trokel is the sole inventor named on the other three. All six patents-in-suit have been assigned to defendant VISX, Inc. ("VISX"), which is a wholly owned subsidiary of defendant Advanced Medical Optics, Inc. ("AMO"). Serdarevic claimed to be the sole inventor of the subject matter claimed in the `388 patent, and a co-inventor of the subject matter claimed in the other five.

In a declaration in opposition to defendants' motion for summary judgment, Serdarevic described her inventorship claims in detail. She claimed to have conceived of her invention between September 1979 and September 1983. During part of that time, Serdarevic participated in a clinical clerkship in Paris with Professor Marcel Massin ("Massin"), whom Serdarevic characterized as a prominent retinal laser specialist. Serdarevic discussed her research findings with Massin and engaged in what she characterized as a long-term continuing interaction with him from 1979 through 1982, including repeated discussion of the concepts that formed her invention. Serdarevic also described discussions that she had in 1980 with David Maurice, Ph.D. ("Maurice"), whom she characterized as a world-renowned researcher on corneal structure and wound healing. Finally, Serdarevic described her discussions in 1980 with Professor Richard Berson ("Berson"), a physical chemist at Columbia whose work had provided further evidence to Serdarevic that her invention would be suitable for use in corneal surgery. Massin, Maurice, and Berson all died between 2002 and 2003.

Serdarevic learned of the patents-in-suit in October 1998. Through an attorney, Serdarevic contacted VISX in 1999, claiming to be an inventor of the patents-in-suit and requesting a share of past and future royalties derived from the patents. In September 1999, VISX's counsel requested that Serdarevic provide documentation corroborating her inventorship claims, and Serdarevic's counsel agreed to do so. But Serdarevic did not contact VISX again until after she filed her complaint in this action in September 2006.¹

One of the patents-in-suit — the `388 patent — was the subject of reexamination proceedings initiated in January 1998. During her discussions with VISX in 1999, Serdarevic offered to support VISX's position during reexamination, indicating that Serdarevic was aware of the pending proceedings. The reexamination proceedings concluded in 2000, and a reexamination certificate issued on September 19, 2000.

Serdarevic filed her complaint in this action on September 15, 2006. On March 23, 2007, shortly after Serdarevic filed her second amended complaint, the defendants moved for summary judgment, or, in the alternative, to dismiss. In response, Serdarevic cross-moved for discovery pursuant to Rule 56(f), seeking discovery on two issues: "whether VISX and AMO would have made the same investments in the patents-in-suit despite her delay in filing suit, and whether the individual defendants received payments of any kind within the past seven years." Id. at 2007 WL 2774177.

The district court granted the defendants' motions for summary judgment and denied Serdarevic's cross motion for discovery. Id. at 2007 WL 2774177. Specifically, the district court held that Serdarevic's inventorship claim was barred by laches and that her state-law claims were barred by the applicable statutes of limitations. Id. at 2007 WL 2774177. Serdarevic timely appealed. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

II. DISCUSSION

A. Laches

Laches is an equitable defense that may bar an inventorship claim. See Lane & Bodley v. Locke, 150 U.S. 193, 201, 14 S.Ct. 78, 37 L.Ed. 1049 (1893) "The application of the defense of laches is committed to the sound discretion of the district court." A.C. Aukerman Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020, 1032 (Fed.Cir.1992) (en banc). Thus, "[o]n appeal the standard of review of the conclusion of laches is abuse of discretion. An appellate court, however, may set aside a discretionary decision if the decision rests on an erroneous interpretation of the law or on clearly erroneous factual underpinnings. If such error is absent, the determination can be overturned only if the trial court's decision represents an unreasonable judgment in weighing relevant factors." Id. at 1039. Because the district court in this case decided laches on summary judgment, "there must, in addition, be no genuine issues of material fact, the burden of proof of an issue must be correctly allocated, and all pertinent factors must be considered." Id.

Serdarevic challenges the district court's laches determination on three grounds: (1) that the district court improperly relied on the presumption of laches; (2) that she presented sufficient evidence to rebut the presumption; and (3) that the defendants' unclean hands precluded them from relying on the laches defense. We address each in turn.

1. Presumption of Laches

"[A] delay of more than six years after the omitted inventor knew or should have known of the issuance of the patent will produce a rebuttable presumption of laches." Advanced Cardiovascular Sys., Inc. v. Scimed Life Sys., Inc., 988 F.2d 1157, 1163 (Fed.Cir.1993). Serdarevic admits knowing of the issuance of the patents-in-suit in October 1998. She did not file suit until September 15, 2006 — nearly eight years later. Thus, as the district court correctly concluded, the presumption of laches applies.

Serdarevic argues that the presumption of laches should not apply as to her inventorship claim for the `388 patent, because the reexamination certificate for the `388 patent did not issue until September 19, 2000, and she brought suit just less than six years later, on September 15, 2006. Citing this court's decision in Vaupel Textilimaschinen KG v. Meccanica Euro Italia S.P.A., 944 F.2d 870 (Fed.Cir.1991), Serdarevic claims that "this Court has noted that the operative date for laches purposes is the date the reissue proceedings concluded, not when the party learned of the prior issuance." Appellant's Br. at 26 (citing Vaupel, 944 F.2d at 876-79). Thus, Serdarevic argues, under Vaupel, the issuance of a reexamination certificate resets the six-year clock for the presumption of laches.

Vaupel does not stand for this broad proposition. Vaupel was an infringement case, not an inventorship case. See 944 F.2d at 871. In Vaupel, the patentee learned of the infringing activity while the patent-in-suit was the subject of reissue proceedings before the PTO. Id. The accused infringer received notice of the reissue proceedings and participated in them. Id. The reissue proceedings concluded five years later, and the patentee brought its infringement action three years thereafter — a total of eight years after learning of the infringement. Id. at 876.

We held in Vaupel that the patentee's delay in bringing its infringement action was excusable because the patent owner was engaged in "other litigation" — namely, the reissue proceedings. Id. at 877. Because the infringer knew of and participated in the reissue proceedings, and because the patentee had made clear to the infringer that...