Federal Circuit Declines to Create a Federal Cause of Action for Assignor Estoppel
By Glenna L. Gilbert
On February 13, 2013, in Semiconductor Energy Laboratory Co., Ltd. v. Yujiro Nagata, Appeal No. 2012-1245, the Federal Circuit held that there is no federal cause of action for assignor estoppel.
Appellant Semiconductor Energy Laboratory Co., Ltd. (“SEL”) owns U.S. Patent 6,900,463 (the “’463 patent”). The ’463 patent names respondent Dr. Yujiro Nagata (“Dr. Nagata”) as a co-inventor. During prosecution of the patent, Dr. Nagata assigned his rights to applications and patents related to the ’463 patent to SEL’s founder, and signed a substitute Declaration and Assignment (“the 1991 Declarations and Assignments”). In 2009, SEL sued Samsung, Inc. for infringement of a number of patents, including the ’463 patent. SEL contacted Dr. Nagata to assist in the Samsung litigation. Dr. Nagata had already agreed however to assist Samsung in the litigation as a fact witness. Dr. Nagata subsequently gave testimony repudiating his signature on the 1991 Declarations and Assignments. The Samsung case ultimately settled, but SEL maintained that be cause Dr. Nagata’s testimony impugned the enforceability of the ’463 patent, SEL settled for less money than it would have otherwise.
| | 20-Year Delay in Asserting Claim for Correction of Inventorship Does Not Result in Laches By John A. Kvinge
Under U.S. patent law, an individual that believes he or she was incorrectly omitted as a named inventor on a patent can bring a lawsuit under 35 U.S.C. § 256 to request correction of inventorship. However, the equitable doctrine known as “laches” provides a defense to this claim. Laches may result when an allegedly omitted inventor unreasonably delays in filing suit and the delay causes material prejudice to the defendant. Because laches is an affirmative defense, the defendant generally bears the burden of proof. However, laches is somewhat unique in that a presumption of laches applies if there has been more than a six year delay between the time the unnamed inventor knew or should have known that he or she was not named as an inventor in the patent, and the time he or she brings suit under § 256.