By Karin C. Khan

This case involves an appeal by Olivia Serdarevic (“Serdarevic”) in which she claimed that she was the inventor and/or co-inventor of laser vision correction technology disclosed in six U.S. patents.  Serdarevic had brought her claim against VISX, Inc. (“VISX”), its corporate parent, Advanced Medical Optics, Inc. (“AMO”) and the named inventors, Stephen L. Trokel, M.D. (“Trokel”) and Francis L’Esperance (“L’Esperance”) (also collectively referred to as “Defendants”).  Serdarevic sought correction of inventorship and also alleged various state-law claims.  The district court granted Defendants’ motion for summary judgment on the basis of laches.

            The six patents-in-suit were issued between 1987 and 1998, and the named inventors were Trokel (for three of the six issued patents) and L’Esperance (for the other three of the six patents).  All of the patents were assigned to VISX by the inventors.  Serdarevic claimed that while a resident she had worked with both Trokel and L’Esperance to develop the technology now patented.  In fact, Serdarevic claimed that she was the sole inventor of one of the patents-in-suit and a co-inventor for the remaining five patents.  At one point, in her opposition to Defendants’ summary judgment motion, Serdarevic had argued that three other doctors, now deceased, had knowledge of her inventorship.

            When Serdarevic learned of the patents-in-suit in 1998, she later approached VISX in 1999 and agreed to provide documentation demonstrating her inventorship claims.  Serdarevic even offered to participate in a reexamination proceeding for one of the patents-in-suit.  However, Serdarevic apparently never did either of these things, and VISX did not hear back from Serdarevic until she filed her lawsuit on September 15, 2006.  When Defendants filed a summary judgment motion, Serdarevic in turn moved for discovery pursuant to F.R.C.P. 56(f) as to certain issues.

            In considering the laches issue, the Court of Appeals had to determine whether the district court’s determinations were correct as to the presumption of laches defense, the sufficiency of the evidence submitted to rebut the presumption, and whether the defendants’ unclean hands precluded them from a laches defense.

            Because Serdarevic filed suit more than six years after learning of the patents-in-suit, a presumption of laches defense arose.  Serdarevic had argued that the six year period invoking the laches presumption did not begin in 1998 when she first knew of the patents-in-suit, but on September 19, 2000 when the reexamination certificate was issued.  However, the Court noted that Serdarevic was not involved in the reexamination proceeding, and that such proceeding did not change her claim of inventorship.

            Not only did the laches presumption apply to Serdarevic’s claims, but the Court confirmed the district court’s findings that she did not sufficiently rebut the presumption that her delay in bringing the claim was unreasonable or that Defendants experienced material prejudice due to the delay.  As to the delay being reasonable, Serdarevic had attempted to convince the district court that she was unfamiliar with the U.S. patent rules and that she had attempted to license her inventorship rights. 

            As to the issue of material prejudice to Defendants, the Court considered whether evidentiary and/or economic prejudice arose due to Defendants’ inability to present a full and fair defense on the merits.  With respect to evidentiary prejudice, Serdarevic had attempted to show that the Defendants would not suffer any prejudice by not being able to depose the three already deceased witnesses whom Serdarevic claimed to have knowledge of her inventorship.  The Court noted that not only would the Defendants be prejudiced by the unavailable witnesses, but the Defendants would be prejudiced by the “dimming” memories of the parties and non-parties involved.  As a result, the district court did not considered economic prejudice since Serdarevic failed to meet her burden in overcoming the presumption as to evidentiary prejudice.

            As to Serdarevic’s state law claims of unclean hands, unjust enrichment and fraud, she was able to present very little evidence, and not surprisingly, the Court affirmed the district court’s finding ruling in Defendants’ favor.