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Lismont v. Alexander Binzel Corporation

United States District Court, E.D. Virginia, Norfolk Division

August 20, 2014



MARK S. DAVIS, District Judge.

This matter is before the Court on a motion for summary judgment pursuant to Federal Rule of Civil Procedure 56, filed by Alexander Binzel Corporation ("Binzel USA"), Alexander Binzel Schweisstechnik GmbH & Co. KG ("Binzel Germany"), IBG Industrie-Beteiligungs-GmbH Co. KG ("IBG"), and Richard Sattler ("Sattler") (collectively, "Defendants"). ECF No. 66. For the reasons set forth below, the CourL GRANTS Defendants' motion for summary judgment.


The extensive factual background in this case is detailed in the previous orders issued by this Court. ECF Nos. 51, 79. For the purposes of the instant motion for summary judgment, where only Defendants' affirmative defense of laches is at issue, the Court will briefly recite the relevant facts.

In 1997, Binzel Germany filed a German patent application for a method of using a deep drilling process to produce contact tips for welding or cutting torches. The German patent, which issued on December 10, 1998, identified Binzel Germany as the applicant and owner of the patent, and identified Sattler as the inventor. In August of 1998, Binzel Germany filed an international PCT application, which resulted in several patents, including United States Patent No. 6, 429, 406 ("the U.S. patent") issued on August 6, 2002. The U.S. patent listed Sattler as the inventor of contact tips produced by deep drilling.

Hedwig Lismont ("Plaintiff") sued Binzel Germany in October of 2000 in Germany, alleging that he, not Sattler, was the true inventor of the contact tips. In 2002, Plaintiff initiated a second action in Germany, seeking damages related to his inventorship claim. The parties vigorously litigated the inventorship issue in Germany for nine years, until Plaintiff's final appeal was rejected on November 25, 2009. Plaintiff subsequently filed an action with the European Court of Human Rights, "alleging that the German courts violated his right to a full and fair trial under Article 6 of the European Convention for Human Rights." Spross Decl. ¶ 14, ECF No. 71-1 at 24. On October 31, 2012, nearly three years after Plaintiff's final appeal was rejected by the German court, Plaintiff filed a Complaint in this Court, alleging that he is the "sole inventor of the subject matter disclosed and claimed in the [U.S.] patent." Compl. ¶ 41, ECF No. 1. In addition, "[u]pon correction of the inventorship requested in [the Complaint], " Plaintiff alleges infringement by Binzel USA. Id . ¶ 60.

Defendants filed a Motion to Dismiss, alleging, inter alia, that Plaintiff's claims "are precluded by the doctrine of collateral estoppel" and "the doctrine of laches." Defs.' Br. Supp. Mot. to Dismiss at 6-7, ECF No. 34. On November 5, 2013, the Court held a hearing on Defendants' motion and, on November 18, 2013, issued a Memorandum Opinion and Order denying Defendants' motion to dismiss on the grounds of collateral estoppel and laches because the merits of such affirmative defenses could not be determined from the face of Plaintiff's Complaint. ECF No. 51.

Defendants filed their Motion for Summary Judgment on February 7, 2014, alleging that Plaintiff's claims are barred by the doctrine of collateral estoppel and the doctrine of laches. ECF No. 66. Plaintiff filed his responsive brief on February 21, 2014, ECF No. 71, asserting that "genuine issues of material fact exist" and that Plaintiff is "entitled to discovery" because Defendants' affirmative defenses raise "numerous contested factual issues." ECF No. 71 at 3. Defendants filed their reply brief on February 27, 2014. ECF No. 72. On March 12, 2014, the Court entered an Order, observing that Defendants' Motion for Summary Judgment "is potentially dispositive on the issues of both collateral estoppel and laches." ECF No. 79 at 9. Recognizing that discovery for both defenses may not be necessary, the Court granted a limited discovery period and ordered Defendants to respond to certain of Plaintiff's interrogatory requests and requests for production, so that the Court could properly consider Defendants' affirmative defense of laches. The Court noted that, if Defendants' laches defense failed to resolve the motion for summary judgment, the Court would then determine "whether additional discovery is necessary" regarding "Defendants' affirmative defense of collateral estoppel." Id. at 9 n.2. On April 15, 2014, Plaintiff filed his supplemental summary judgment brief, addressing Defendants' laches defense. ECF No. 104. Defendants filed their supplemental reply brief on April 29, 2014. ECF No. 110. Accordingly, Defendants' Motion for Summary Judgment is ripe for review.


The Federal Rules of Civil Procedure provide that a district court shall grant summary judgment in favor of a movant if such party "shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(a). The mere existence of some alleged factual dispute between the parties "will not defeat an otherwise properly supported motion for summary judgment; the requirement is that there be no genuine issue of material fact." Anderson v. Liberty Lobby Inc. , 477 U.S. 242, 247-48 (1986). If the pleadings, affidavits, deposition transcripts, and other discovery materials demonstrate that there is no genuine dispute as to a material fact, "it is the affirmative obligation of the trial judge to prevent factually unsupported claims and defenses from proceeding to trial.'" Hostettler v. Auto-Owners Ins. Co. , 744 F.Supp.2d 543, 545 (E.D. Va. 2010) (quoting Drewitt v. Pratt , 999 F.2d 774, 778-79 (4th Cir. 1993)).

If a movant has properly advanced evidence supporting entry of summary judgment, the non-moving party may not rest upon the mere allegations of the pleadings, but instead must set forth specific facts in the form of exhibits and sworn statements illustrating a genuine issue for trial. Celotex Corp. v. Catrett , 477 U.S. 317, 322-24 (1986). At that point, "the judge's function is not himself to weigh the evidence and determine the truth of the matter but to determine whether there is a genuine issue for trial." Anderson , 477 U.S. at 249. In doing so, the judge must construe the facts and all "justifiable inferences" in the light most favorable to the non-moving party, and the judge may not make credibility determinations. Id. at 255; T-Mobile Ne. LLC v. City Council of Newport News , 674 F.3d 380, 385 (4th Cir. 2012). After viewing the evidence in the non-movant's favor, "the judge must ask himself not whether he thinks the evidence unmistakably favors one side or the other but whether a fair-minded jury could return a verdict for the [non-movant] on the evidence presented." Anderson , 477 U.S. at 252. Because a ruling on summary judgment "necessarily implicates the substantive evidentiary standard of proof that would apply at the trial on the merits[, ]. [t]he mere existence of a scintilla of evidence in support of the plaintiff's position will be insufficient" to overcome a defendant's well-founded summary judgment motion. Id . Accordingly, if the non-movant's evidence "is merely colorable, or is not significantly probative, summary judgment may be granted." Id. at 249-50.


Defendants argue that Plaintiff's claims are "barred by the doctrine of laches" because Plaintiff filed this action "more than ten years after the [U.S.] Patent issued, and more than ten years after [Plaintiff] knew or should have known of the issuance." Defs.' Br. Supp. Mot. for Summ. J. at 13, ECF No. 67. Defendants allege that Plaintiff's "delay is manifestly unreasonable and unquestionably prejudiced Defendants." Id . Plaintiff disagrees, arguing that "Defendants' laches defense must be dismissed" because Plaintiff's delay in filing "the U.S. litigation... was neither unreasonable nor inexcusable" and because "Defendants have not, and cannot, show material evidentiary [or economic] prejudice." Pl.'s Suppl. Br. in Opp'n at 11, ECF No. 104.

A defendant may invoke the laches defense by proving that (1) "the plaintiff delayed filing suit for an unreasonable and inexcusable length of time from the time the plaintiff knew or reasonably should have known of its claim against the defendant" and (2) "the delay operated to the prejudice or injury of the defendant." A.C. Aukerman Co. v. R.L. Chaides Constr. Co. , 960 F.2d 1020, 1032 (Fed. Cir. 1992) (en banc). In determining whether to apply the laches defense, the "court must look at all of the particular facts and circumstances of each case and weigh the equities of the parties." Id.

"[A] delay [in filing suit] 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); see also Pei-Herng Hor v. Ching-Wu Chu , 699 F.3d 1331, 1334 (Fed. Cir. 2012) ("For inventorship claims under § 256, a delay of six years after a claim accrues creates a rebuttable presumption of laches." (citing Advanced Cardiovascular , 988 F.2d at 1163)); Serdarevic v. Advanced Med. Optics, Inc. , 532 F.3d 1352, 1358 (Fed. Cir. 2008). Once the presumption of laches has attached, the "burden of production" shifts to the plaintiff, who "can rebut the presumption of laches by offering evidence to show an excuse for the delay or that the delay was reasonable' or by offering evidence sufficient to place the matters of [evidentiary] prejudice and economic prejudice genuinely in issue.'" Serdarevic , 532 F.3d at 1359-60 (quoting Aukerman , 960 F.2d at 1038). To rebut the presumption that a delay is unreasonable and inexcusable, the plaintiff "bears the burden only of coming forward with sufficient evidence to raise a genuine factual issue respecting the reasonableness of [his] conduct." Aukerman , 960 F.2d at 1039. If the plaintiff introduces "evidence sufficient to raise a genuine dispute as to either delay or prejudice, " the defendant is "put to its proof on both factors" and "must affirmatively prove (1) unreasonable and inexcusable delay and (2) prejudice resulting from that delay." Hemstreet v. Computer Entry Sys. Corp. , 972 F.2d 1290, 1293 (Fed. Cir. 1992) (citing Aukerman , 960 F.2d at 1032, 1037-38). However, if the plaintiff fails "to come forward with either affirmative evidence of a lack of prejudice or a legally cognizable excuse for its delay in filing suit, the two facts of unreasonable delay and prejudice must be inferred.'" Hall v. Aqua Queen Mfg., Inc. , 93 F.3d 1548, 1553-54 (Fed. Cir. 1996) (quoting Aukerman , 960 F.2d at 1038).

Of course, "the establishment of the factors of undue delay and prejudice, whether by actual proof or by the presumption, does not mandate recognition of a laches defense in every case." Aukerman , 960 F.2d at 1036. "Those factors merely lay the foundation for the trial court's exercise of discretion. Where there is evidence of other factors which would make it inequitable to recognize the defense despite undue delay and prejudice, the defense may be denied." Id . Furthermore, "[i]f the decision on laches is made on summary judgment, there must [exist] no genuine ...

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