Hor v. Chu
765 F. Supp. 2d 903
S.D. Tex.2011Background
- This is a patent inventorship dispute over US Patents 7,056,866 and 7,709,418 related to high-Tc superconductors; Chu is listed as the sole inventor while Hor and Meng claim joint inventorship.
- Hor (plaintiff) and Meng (intervenor) allege they conceived key substitutions and processing steps underlying the patents during 1986–1987 but were not named as inventors.
- Chu contends he conceived the core Yttrium substitution and that Hor and Meng merely communicated or assisted under his direction.
- Wu and other UH collaborators assisted with experiments; there were later patent interference proceedings (Wu Interference) resolving priority in Chu’s favor.
- In 2006 Hor and Meng learned they were not named inventors; UH and Chu sought to suspend patent issuance while evaluating inventorship; the court held laches bars the inventorship claims and also granted unclean hands defenses.
- The court granted Chu’s summary judgment on inventorship based on laches and dismissed Hor’s and Meng’s unclean hands defenses; laches precludes reaching other motions.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether laches bars Hor and Meng’s inventorship claims | Hor and Meng argue they were timely or that delay was excusable | Chu asserts laches due to decades-long delay after knowledge of omissions | Laches applies and bars the claims |
| When the laches period begins for inventorship claims | Period should begin after patent issuance (infringement framework) | Period may begin before issuance since remedies exist pre-issuance | Laches period may begin before patent issuance; knowledge of omission triggers delay |
| Whether unclean hands defeats the laches defense | Meng and Hor argue Chu’s and UH’s conduct warrants equitable consideration | Unclean hands not proven; conduct not egregious or causally linked to delay | Unclean hands defenses granted in support of laches defense |
Key Cases Cited
- Advanced Cardiovascular Systems, Inc. v. SciMed Life Sys., Inc., 988 F.2d 1157 (Fed. Cir. 1993) (sets the known-or-should-have-known standard for delays)
- Aukerman Co. v. R.L. Chaides Const. Co., 960 F.2d 1020 (Fed. Cir. 1992) (en banc laches framework for inventorship and delay)
- Serdarevic v. Advanced Medical Optics, Inc., 532 F.3d 1352 (Fed. Cir. 2008) (presumption of laches and its rebuttal in inventorship)
- Expert Microsystems, Inc. v. University of Chicago, 712 F. Supp. 2d 1116 (E.D. Cal. 2010) (knowledge on first page can put inventors on notice of omission)
- Eli Lilly & Co. v. Aradigm Corp., 376 F.3d 1352 (Fed. Cir. 2004) (contexts involving inventorship corrections and related remedies)
- Display Research Laboratories, Inc. v. Telegen Corp., 133 F. Supp. 2d 1170 (N.D. Cal. 2001) (discusses PTO procedures and interference as remedy routes)