For Correction Of Inventorship Under 35 U.S.C. § 256, The Laches Period Begins When The Patent Issues

In Hor v. Chu, No. 11-1540 (Fed. Cir. Nov. 14, 2012), the Federal Circuit reversed the district court's SJ that the plaintiffs' claims to correct inventorship under 35 U.S.C. § 256 were barred by laches, affirmed the district court's SJ in favor of the defendant on the plaintiffs' unclean hands defense, and vacated the district court's sua sponte SJ that the plaintiffs' claims were barred by equitable estoppel.

U.S. Patent Nos. 7,056,866 ("the '866 patent") and 7,709,418 ("the '418 patent") are directed to superconducting compositions and list Ching-Wu Chu as the sole inventor. The '866 and '418 patents issued in 2006 and 2010 from applications that were filed in 1987 and 1989, respectively. Pei-Herng Hor and Ruling Meng, who worked in Chu's research lab at the University of Houston, filed suit in the District Court for the Southern District of Texas to correct the inventorship of the '866 and '418 patents under § 256.

The district court granted Chu's motion for SJ that the claims were barred by laches, reasoning that the inventorship claims arose before the patents issued, and that Hor and Meng knew or should have known of their claims by at least the early 1990s. The district court found that a presumption of laches, which attaches after six years, applied because Hor did not sue until 2008 and Meng did not intervene until 2010, and that neither plaintiff rebutted this presumption. The district court also entered judgment in favor of Chu on the plaintiffs' unclean hands defense and sua sponte determined that the inventorship claims were barred by equitable estoppel.

On appeal, the Federal Circuit relied on the language of the statute and held that a claim for correction of inventorship under § 256 does not begin to accrue until the patent issues. The Court disagreed with the district court's reliance on potential correction procedures before the PTO, holding that an omitted inventor's failure to seek correction under 35 U.S.C. § 116 or § 135 does not prevent the inventor from challenging inventorship under § 256.

"A § 256 claim for correction of inventorship does not accrue until the patent issues" because "that is what the language of the provision requires." Slip op. at 7.

The Court explained that its holding was supported by the plain language of the statute, the accompanying regulations, and "[its] instruction that § 256 be 'interpreted . . . broadly' to protect the 'public interest of assuring correct inventorship designations on...