A.C. Aukerman Company v. R.L. Chaides Construction Co.

purchase. agree. 11(B) We Part Randolph’s policy insurance stated: COMPANY, A.C. AUKERMAN you acquire

A truck which permanently Plaintiff-Appellant, replaces a covered truck will be a cover- days ed truck for 30 with the same cover- R.L. CHAIDES age^) liability and limits of CONSTRUCTION in effect for CO., replaced. Defendant-Appellee.

the truck If you NOTICE: want to continue the No. 90-1137. coverage(s) liability and limits of on that truck, you United States Appeals, must tell us Court of within the 30 days you acquire you after it that want Federal Circuit.

to insure it coverage(s) and what March 1992. liability you limits of want on that truck. Rehearing May 19, Denied adjusted

Premium will accordingly. argues quoted

Carolina language

requires given that it be notice pur-

chase of the days new truck within 30 as a precedent

condition to coverage of the ve-

hicle. disagree. We The policy clearly

provides replacement that a truck is auto-

matically covered days for 30 pur-

chase. given Notice must be within 30

days in order to coverage past continue

30-day period. argues

Carolina next ques that a

tion of fact exists as to whether the Peter replacement

bilt was a truck. It is true

that a Kenworth truck was also added to

Randolph’s policy insurance at the time the

Peterbilt was added and the International However,

deleted. it is clear that the Pet

erbilt was replace intended to the Interna deposition,

tional. In his Mr. Stewart Ran

dolph, part Randolph owner of Trucking, Peterbilt,

testified under oath that the Kenworth, replaced the International.

When the purchased, Peterbilt was the In

ternational’s license and driver were trans Peterbilt;

ferred to the the International

was then retired. The mere fact that the

Kenworth was policy added to the at the

same time as the Peterbilt is insufficient to

support Carolina’s claim that a material

issue of fact exists as to which truck re

placed the International.1

AFFIRMED. 1. Because we find that the Peterbilt policy was a re- was covered under the as an "additional vehicle, placement we need not address Ran- vehicle." dolph’s argument alternative that the Peterbilt Dodson,

Gerald P. Townsend & Town- send, Francisco, Cal., argued San plain- tiff-appellant (Roger L. Cook and David L. Bilsker, brief). on Schatzel, Thomas E. Law Offices of Schatzel, Clara, E. Cal., Thomas Santa ar- gued for defendant-appellee. Cushman, Hymo, Lawrence A. Darby & Cushman, D.C., Washington, argued for curiae, amicus Federal Bar Circuit Ass’n (William Bullinger, T. Berquist, James D. Eccleston, Lynn E. Kendrew H. Colton and Kananen, Dzwonczyk, Michael R. Ronald Marks, White, Evangeline Murase & W. President, Swift, Federal Circuit Bar Ass’n Hutchinson, George and E. Di- Executive rector, Ass’n, brief). Federal Circuit Bar on Waters, Jerry Selinger R. and Martha E. Elkins, Dallas, Tex., Vinson & were on the curiae, Datapoint Corp. for amicus brief McKeown, Evenson, Wands, F. James Chair, Edwards, McKeown, Lenahan Bar & Columbia, Washing- Ass’n of the District of ton, D.C., curiae, argued Bar for amicus (Anthony Ass’n of the District of Columbia Rea, Burns, Shaw and Teresa Stanek W. Va., Doane, Mathis, Arlington, Swecker & brief; Cantor, Weg- I. on the and Herbert ner, Cantor, Player, Washington, Mueller & D.C., counsel, brief). on I. Methvin, L. Thomas Crisman Gaynell C. Gibbs, Petruzzi, Johnson & D.

and James BACKGROUND for Dallas, Tex., on the brief were P.C., disputed. following facts are Entry Systems curiae, Computer amicus ’133 assignee of the is the Aukerman Banctec, Inc. Corp. and to, respectively, patents, relating and ’633 Priest, H. Bradley and Peter forming W. concrete Charles and device for method Hapgood, New Hoxie, separating & Davis, capable of highway Faithful barriers for amicus brief elevations. highway on the surfaces City, were York different slip-form Systems, Inc. & The device allows contractor curiae, Lundy Electronics the mold is asymmetrical barrier Kelly, and John J. H. Klitzman Maurice i.e., pour highway, moved down the for D.C., the brief Washington, were highway directly onto the without barriers curiae, Ass’n. Industries Electronic amicus In settlement a mold. having to construct Corporation, a litigation with Gomaco RICH, NIES, Judge, Before Chief may be slip-forms which manufacturer MICHEL, MAYER, ARCHER, NEWMAN, height regular or variable to form used CLEVENGER, LOURIE, PLAGER, barriers, agree- into an Aukerman entered RADER, Judges. Gomaco licen- Circuit in 1977 which made ment required Gomaco patents

see under pur- all those who notify Aukerman of NIES, Judge. Chief adjustable slip-forms. chased Gomaco’s No. 90-1137 Appeal This court reheard pur had Chaides Upon notification that of lach- principles to reconsider in banc Gomaco, counsel slip-form chased in a applicable estoppel es and by letter advised Chaides for Aukerman suit.1 A.C. Aukerman infringement that use of the February dated inCo. Construction sued R.L. Chaides Co. question “a device raised District Court States United or more of respect to one [Auker- infringe- of California District Northern [2],” offered patents-in-suit man’s patents, Patent of Aukerman’s ment letters were a license. Follow-on Chaides (’633). 4,014,633 (133) 3,793,133 Nos. on to Chaides Aukerman’s counsel by sent v. R.L. Chaides Co. Aukerman A.C. 12, April 1979. Chaides re 16 and March (N.D.Cal. Co., No. C-88-2074-SW Constr. 17, 1979 April but by telephone on plied court held on 1, 1989). district The Sept. Auk- speak counsel for with was unable was that Aukerman judgment summary 24, 1979, April Auker- By letter of erman. eq- and of laches principles under barred Auker- that advised Chaides man’s counsel maintaining suit estoppel from uitable patents its seeking enforce man was that We conclude appeals. Aukerman and that, though even infringers against all and standards, clari- we have correct among the smaller con might be Chaides in district herein, applied were fied tractors, need for a license it had same summary judgment. grant of court’s further that firms. He advised larger correct Moreover, upon application past liability for would waive Aukerman arise material law, fact exist genuine infringement issues under and infringement by license issues respect to if took ing Chaides contracts with Accordingly, responded we re- late 1, estoppel. 1979. Chaides June equitable on Auker- for motion a note handwritten ruling April on the court’s with verse any he felt that pro- stating letter man’s last and remand for summary judgment that, if was Gomaco’s responsibility opinion. with ceedings consistent per- to a third April also referred 2. The letter panel of the court issued of a A decision 1. 1618, slip-form. Per 1991, taining gate USPQ2d on the 25, WL structure reported at 18 22,May charged 62407, Aukerman, longer being banc order on no Chaides is was vacated 1262, USPQ2d reported patent. F.2d at 935 of this with Aukerman wished to sue “for any event, Chaides gave Aukerman no notice year,” Aukerman should $200-$300 do so. to Chaides of any litigation during peri- There was no further correspondence or od of delay up to October 1987. The court parties contact between the for rejected more than Aukerman’s argument further eight years. interim, In the in Chaides that the delay in suit was attributable to creased its of forming asymmetri business representation Chaides’ of de minimis in- highway cal barrier walls.3 fringement. Sometime in The court held that the evi- mid-80’s, Chaides made a second ad dence prejudice showed to Chaides in that justable pouring (1) mold for step wall which Chaides would pay have to a license fee alleges Aukerman infringement. projects is an it had bid on without having allowed for this normal (2) cost and Apparently in one of Aukerman’s might Chaides gone into bankruptcy licensees, Inc., Baumgartner, advised Auk- had it known of liability its past in- erman that Chaides was a com- substantial fringement. The court also held that petitor asymmetrical for pouring wall ability Chaides’ to defend itself would be California.4 This prompted advice Auker- prejudiced because necessary witnesses for man’s new counsel to send a letter to defense, Chaides’ including the inventor Chaides on October referencing named in the subject patents, were unavail- correspondence, earlier advising that able and that memories witnesses, of other litigation against another company had such as Mr. Aukerman’s, had faded. resolved, been threatening litigation Respecting equitable estoppel, unless Chaides previ- executed the licenses court placed the burden on ously sent Chaides to within weeks. establish pe- two Another this defense. The court then held riod silence August followed. On Aukerman’s silence nearly years ten again Aukerman’s counsel wrote after making an initial protest was suffi- explaining Chaides fully more Aukerman’s ciently misleading to constitute bad faith licensing proposal. When no reply and that Aukerman should have received, notified on October Aukerman Chaides of the effect of the otherwise am- charging filed suit Chaides infringing biguous June 1979 deadline. The court patents. ’133 and ’633 went on to determine that Chaides had granted district court summary detrimentally relied on Aukerman’s silence judgment Chaides, in favor holding in deciding forego bankruptcy and to bid the doctrines of estoppel laches and barred highway low on contracts. court, Aukerman’s claims for relief. The The court also found the defenses of citing Jamesbury Corp. v. Litton Indus. laches and estoppel were not de- Prods., USPQ2d feated reason of Chaides’ “unclean (Fed.Cir.), denied, cert. particular, hands.” In Aukerman had (1988), S.Ct. 102 L.Ed.2d 57 ruled that pointed to Chaides having copy made a delay Aukerman’s years of more than six slip-form. Gomaco The court stated suing in Chaides shifted the burden Auk- to presented Aukerman no evidence on “how prove erman to that its was reason infringed the copy patent.” Finally, it prejudicial able and was not to Chaides. mid-80s, held that when this device rejected court proffered The Aukerman’s use, was in already Aukerman had affirma- excuse that it engaged in litiga other tively misled Chaides. litigation because such tion did not cover period February from July reasons, to For these the district court en- Chaides, after it first contacted judgment tered for Chaides. affidavit, 3. Chaides’ public sales are a "Bumgart- records matter of In his Aukerman recalls in 4. stating, only ner” record inasmuch as its sales [sic] are to the Chaides was a competitor asymmetri- pouring for substantial State California. From 1980 to its However, cal wall barriers in 3,125 California. step annual sales of rose wall feet to late, year appears date to be a because Auker- 62,000 over feet. by sending man ended its silence in letter to Chaides. misleading patentee, through a. The II. conduct, alleged infringer to leads the SUMMARY patentee that the does reasonably infer to case in banc taken this court has The patent against not intend to enforce of laches principles clarify apply alleged infringer. “Conduct” raised been which have estoppel equitable statements, action, in- specific include infringement patent in this as defenses action, or there was an silence where to be more summary, reasons suit.5 obligation speak. to respect to discussed, hold with we fully infringer alleged The relies on that b. laches: conduct. under 35 cognizable is 1. Laches reliance, alleged in- Due to its c. de- (1988) equitable an as U.S.C. § prejudiced if fringer materially will be infringement. for patent to a claim fense proceed to with patentee is allowed laches is es- the defense of 2. Where its claim. tablished, claim for dam- patentee’s applicable presumption is 4.No may be barred. ages prior to suit equitable estoppel. defense of the defense elements underlie 3. Two defenses, laches and equitable As delay in (a) patentee’s laches: estoppel are matters committed equitable and inex- unreasonable bringing suit was judge of the trial to the sound discretion cusable, (b) alleged infringer suf- judge’s decision reviewed and the trial prejudice attributable material fered of discretion under the abuse this court con- court should delay. The district appreciate that the district standard. We the evi- factors and all of these sider case, court, deciding instant did not deter- other circumstances dence statements of benefit of these have the equity intercede should whether mine re differ some legal principles which damages. pre-filing bar no precedent. We spects from our have laches arises presumption of 4. A that, alternative, however, but to rule when delays bringing suit for patentee where the record principles applied to these are after the date the years six than more us, in grant court erred the district before known of knew should patentee summary favor Chaides. ing judgment activity. alleged infringer’s the effect of presumption has A5. III. going forward shifting the burden evidence, persua- not the burden LACHES sion. A. Laches Viability estoppel equitable respect With Defense claim, we against patent rec long has Supreme Court that: hold patent to a of laches ognized the defense cognizable estoppel Equitable brought equity. infringement action 35 U.S.C. Locke, § under Bodley Co. v. Lane & infringe- to a claim (1893); defense Wollen 14 S.Ct. L.Ed. ment. Reiher, sak Harwood, infringer estab- 112 alleged (1885); an 2. Where Mahn v. L.Ed. 350 estoppel, (1884). equitable 354, 174, L.Ed. 665 the defense of lishes 5 S.Ct. U.S. entirely may generally claim be as “slack patentee’s Laches be defined duty oppor or toward barred. ness or carelessness Third New Interna tunity.” estab- Webster’s must be Three elements 3. (1969). legal con In a Dictionary by reason tional patentee’s suit to bar lished neglect as the defined text, laches be estoppel: equitable Columbia, Elec- District by: of the the Fed- Association curiae were filed of amici 5. Briefs Association, Entry Computer Association, Lundy Electronic Industries tronic Bar Circuit eral Systems, Banctec, Inc. Inc., Corporation, Corporation, Systems Bar Datapoint delay in bringing remedy or suit to patent infringement, laches was well alleged wrong, together taken which established at the time of recodification of circumstances, lapse of time and other patent laws in 1952.6 The commentary prejudice party causes to the adverse and of one of the drafters of the patent revised operates equitable as an bar. W.M. statute confirms the intention to retain the Tabb, Reconsidering Application laches, defense of specifically by 35 U.S.C. Litigation, Laches in Environmental 282:7 § Harv.Envtl.L.Rev. 377 n. 1 “[Lach- The defenses which may be raised in an plaintiff exacts of the no more than fair es] involving action validity infringe- or dealing adversary.” with his 5 J.N. Pomer _ ment patent of a ‘Non- are[:] 21, oy, Equity Jurisprudence (Eq at 43 § infringement, absence of liability for in- Supp.1905). refusing uitable Remedies In fringement, or unenforceability’ [35 patentee’s infringe to enforce a claim of 282][;] U.S.C. ... this would § include ment, Supreme Court invoked the max ... laches, defenses such as equity, im: “Courts it has often been estoppel and unclean hands. said, upon slept will not assist one who has Federico, P.J. Commentary on the New rights, his and shows no excuse for his Law, 1, (West 1954). Patent 35 U.S.C.A. 55 asserting laches in them.” Bod Lane & In J.P. Inc., Stevens & Co. v. Lex Tex Ltd. 201, ley, 150 U.S. S.Ct. at 81. 1089, 747 F.2d USPQ Environmental Fund v. Alexan Defense (Fed.Cir.1984), denied, 822, cert. 474 U.S. der, (5th Cir.), denied, 614 F.2d 474 cert. 73, (1985), S.Ct. 88 L.Ed.2d 60 this 449 U.S. 101 S.Ct. 66 L.Ed.2d 146 interpreted court so stating: section 282 (1980), explained the court the rationale (1) Paragraph Section includes [of 282] underlying apt the doctrine of laches in this “equitable laches, defenses such as es- manner: toppel and unclean hands.” Laches ais clement doctrine. It as- argues, nevertheless, Aukerman grievances sures day that old will some that the inapplicable, defense of laches is rest, litigation be laid to that will be law, against as a matter of a claim for decided on the basis of evidence that damages infringement suits. For reasonably remains accessible proposition, this argues Aukerman first against presented those whom claims are recognition of laches as a defense con unduly will not prejudiced by delay (1988), flicts with 35 U.S.C. asserting Inevitably them. it means that § provides: potentially some meritorious demands will be entertained. But there is law, Except provided by as otherwise no

justice too in an end conflict and recovery any infringe- shall be had for quiet peace. years pri- ment committed more than six filing complaint or coun- Id. at 481. terclaim for in the action. well, Extended to suits at law as Aukerman, “part provision compara- Per general body became of rules governing sys- relief in the federal court ble to a statute of limitations which effec- tively tem.” Id. at 478. As a defense to a claim preempts the laches defense. Co., Hawley (1924); v. See Brennan Prods. 182 F.2d 45 S.Ct. L.Ed. 462 Wilkie Man (7th denied, Cir.), Co., (D.N.J 945 89, cert. 71 S.Ct. Mfg. hattan Rubber 8 F.2d Co., (1950); 95 L.Ed. 631 Gillons v. Shell .1925), (3d 1926). aff’d, 14 F.2d 811 Cir. For a Cir.1936), 600, 606-07, (9th Walker, ce comprehensive listing, more see 4 denied, rt. 82 L.Ed. (Deller’s 1937). Patents ed. § 880B Co., (1937); Baker v. Ford Motor 69 F.2d 665 (3d Cir.1934); Westco-Chippewa Pump Co. pertinent part: 7. 35 U.S.C. 282 reads in § Supply Delaware Elec. & 186- following any shall be defenses in ac- (3d Cir.1933); Dwight Lloyd Sintering & 88 Co. involving validity infringement 823, or of Greenawalt, (2d 1928); tion v. 27 F.2d 827 Cir. patent pleaded: a be George Meyer Mfg. Mfg. shall J. Co. v. Miller 24 of, 505, (l) (7th Cir.1928); liability Noninfringement, Huff, absence F.2d 506-08 Ford v. denied, 602, (5th Cir.), unenforceability_ infringement, 296 F. 652 cert. 266 U.S. or arising doubly equitable considerations from de- is of argument Aukerman's rights. in its in of one’s Without First, lay is error assertion Aukerman in flawed. express recognized statute of as that, exception, all circuits where position claim, laches against charge patent infringe- a of applies a defense to a limitations period. within the limitation of the dam- apply despite ment the reenactment cannot jurisdiction, laches of our See areas in the statute. ages other limitation stat prescribed applied (and within routinely Chisum, Patents § 19.05[2] cases D.S. bringing the period for limitations therein); ute of Rydstrom, Annota- Jean F. cited States, v. United claim. See Cornetta in Patent In- tion, as Laches Defense banc) (in (military (Fed.Cir.1988) F.2d 1372 Suit, 35 A.L.R. Fed. 551 fringement Finance Reconstruction accord pay); (1977). as is not remarkable inasmuch This Ltd., Corp. & v. Harrisons statutory language of section 286 was Crosfield denied, cert. (2d Cir.), 346 U.S. F.2d 366 provi- predecessor to a virtually identical (breach 69, (1953) 854, 98 L.Ed. 74 S.Ct. recog- under which laches also sion contract). of Lloyd Co. Dwight Sintering & nized.9 Cir.1928) Greenawalt, (2d Second, section 286 respect with (L. Hand, J.) (recovery barred thirteen- on dam six-year limitation specifically, a the six year delay for “even the earliest of 286, has virtually identical section ages, any recovery years is in event to which 1897. As patent statute since in the been limited.”) Nippon Oil Co. Standard explained Co., 754 F.2d Kogyo Kagaku Shokubai afresh, no diffi at we have Even looked (Fed. 347-48, USPQ harmoniously reading culty in section 286 of Cir.1985), is not statute section 286 of recognition under section 282 with the barring of a suit for in the sense limitations 286, Con By defense. section the laches Assuming finding of lia infringement.8 arbitrary gress imposed an limitation limit section 286 bility, the effect of damages be period for which infringing damages for acts recovery to patent infringe any claim for awarded on the date of years six within committed hand, Laches, invokes on the other ment. infringement action. One filing of the district discretionary power of the the date of backwards counts liability for defendant’s to limit the court damages pre-filing limit arbi complaint to equities by reason of the be infringement However, Standard trarily. as stated Ste See J.P. parties. particular tween Oil, recovery six respect to the USPQ at 1093. vens, damages: years of defense, thus, as a Recognition of laches course, assumes, impedi- no other This enforceability general does not affect recovery or maintenance ment pre against others or the patent doctrine of application of the such as suit 282. validity under section sumption laches. suggests that Con Nothing section at 865. Id. of this dam by reenactment gress intended recog long to eliminate age limitation that section 286 unpersuaded areWe away a laches or to take preclude the de- nized defense interpreted to be should powers in connec effect, district provide, court’s laches and fense of equitable de- An patent cases. regardless tion with years damages of six guarantee 1870-1874, predecessor of early section patent As time of the brief 8. For 694, provided: Stat. limitations an actual statute of contained statute brought any for the suit or action infringement But in required “all actions for any patent be no there shall brought during the term for patents shall damages any in- profits recovery of or granted or extend- shall be letters which ed, years fringement more than six committed years expiration there- six after the or within complaint filing of the bill of before the 1870). (July 55§ of." 16 Stat. action, and issuing in such suit or of the writ 610, 613, Haverhill, Campbell v. existing causes of apply to provision shall 39 L.Ed. action. 1031 equitable 282 arbitrary fense under section and the accounting which Aukerman asks conflict, 286 do not us to limitation section draw should be made. Finally, Aukerman asserts that it is laches, argues Aukerman also improper to utilize laches as a to defense defense, an being equitable reason of completely recovery bar of prefiling dam only applied monetary to awards be ages flowing continuing tort, from a such resulting equitable accounting, from an not patent infringement. as We understand legal damages. to claims for Inasmuch as that, Aukerman arguing to be because each patent statute was amended 1946 to act of separate is deemed a remedy of equitable an ac eliminate claim, defense, the laches like a statute of counting, Aukerman, per change also limitations, must be separately established for a eliminated basis laches defense. respect with to Compare each act. such disagree. We Union Markowitz, Planters Nat’l v. Bank decades, many parties general- For 529, F.Supp. (six- 468 (W.D.Tenn.1979) 532 ly plead equitable allowed to been defenses year limitation separately runs each having sepa- without to to a law resort note of amount), indebtedness for with 1915, equity. Congress In rate bill en- States, (Fed. Hart v. United F.2d 910 815 956, 38 Cir.1990) acted Stat. codified as 28 U.S.C. (six-year limitation does run 398, pleadings. which authorized such separately on claim monthly annuity). § time, As of that laches became available to theory Aukerman’s conflicts relief, legal including patent damage bar precedent the Supreme Court in which Co., v. 69 actions. See Banker Ford Motor against laches has applied continuing been 665, (3d Cir.1934); F.2d 666 accord Ford v. 193, torts as in Lane & 150 Bodley, U.S. 14 (5th Cir.1924). 296 F. Huff, 658 Sec- (patent infringement) S.Ct. 78 and Menen superseded tion 398 was then in 1937 Holt, dez v. 32 S.Ct. merged legal eq- Fed.R.Civ.P. which (trademark (1888) L.Ed. infringement). single uitable claims into a civil action. See cases, In those precedent as well as our 1; Advisory Fed.R.Civ.P. Committee note circuits, and that of other been laches has Moore, 2 J.W. Moore’s Practice Federal single viewed continuing as a defense to a (2d 1991). 12.05[2], at 2-33 n. ed. Sec- suit, up tort to the time of not a series repealed being tion 398 was later as obso- proved individual defenses which must be light lete in of Fed.R.Civ.P. Id. as infringement, to each act of at least with right interpose equitable defense of respect infringing acts of the same na therefore, litigation, re- See, ture. A.C. Aukerman Co. v. Miller today mains viable as it was when sec- 700 n. Formless was first enacted in tion 398 1915.10 (7th Cir.1982). USPQ 863, ex To that tent, continuing acts tortious event, right any interpose In unitary claim. deemed to constitute a Cf. equitable laches in civil defense of action v. Young Eng’rs United Int’l Trade States recognized in specifically Fed.R.Civ.P. Comm’n, 8(c). Technitrol, Accord Inc. NCR (claim (Fed.Cir.1983) preclusion (7th Cir.1975) Corp., (adopt 513 F.2d 1130 applies infringing against type same alia, ing, Part II of court inter district acts). Technitrol, opinion in Inc. v. Memorex (N.D.Ill. event, argument, Corp., F.Supp. any Aukerman’s defendant, 1974)). Hence, unpersuaded we are that which focuses on acts of Lach- applica concept distinction distorts the laches. technical between basic legal dilatory conduct of the against damages tion of laches and an es focuses on the 235, 243, Bank, provisions, equitable S.Ct. 10. Even before these an Condon Nat’l Thus, interjected defense could be into a claim at law L.Ed. 232 enjoin by way equity prosecu- of a bill in against a not been as unavailable defenses have adversary’s eq- suit at tion of law until would have it. suit at law as Aukerman Liberty Oil uitable defense was decided. See Co. 1032 pat- weigh equities the stances of each case and the prejudice and the

patentee Bott, 1576, in delay caused. As stated of F.2d parties. entee’s has 807 at Armbrecht, 327 U.S. 392, 396, Holmberg v. USPQ2d 1 at 1216-17. 582, 584, (1946). L.Ed. 743

66 S.Ct. 90 is, however, that, It settled well a suit A federal court ... dismiss defense, diligence invoke the laches a defendant has plaintiffs’ “lack of is where the factors; unexcused; wholly prove and both nature burden to two of the situation of the claim and plaintiff filing delayed 1. suit for diligence parties was such as call length and an unreasonable inexcusable York, City v. New ...” Benedict 250 plaintiff of time from the time the knew 476, 478, 321, 63 L.Ed. 328 S.Ct. U.S. [39 reasonably or should have known of its (1919)]. 1005 defendant, against claim v. Thus, ruling reaffirm the we Leinoff delay operated prejudice to the 2. Sons, 726 F.2d 734, & 220 Louis Milona injury or of the defendant. USPQ (Fed.Cir.1984) our 845 subse- States, quent precedent11 265, laches is available v. United Costello 365 U.S. infringe- for patent a defense to a suit 534, 543, 282, (1961); 5 L.Ed.2d 551 81 S.Ct. explained in ment. As Inc., 912 1459, Meyers v. Brooks Shoe F.2d Leinoff: 1055, (Fed.Cir.1990); 1461, USPQ2d there no statute from which to Since 16 1057 infringe- of an Corp. Corp., determine timeliness Hottel v. Seaman F.2d 833 action, patentee’s 1572, ment vis-a-vis first 1570, USPQ2d 1939, (Fed.Cir. 4 1940 knowledge infringement, courts use 1987) and cases cited therein. doctrine laches. length The of time which 741, USPQ

726 F.2d at 220 at 850. has fixed deemed unreasonable no depends on the cir boundaries but rather B. Laches Factors Cadwell, 145 U.S. v. Galliher cumstances. application The defense 873, 368, 373, 875, 12 36 S.Ct. L.Ed. 738 to the laches is committed sound discretion (1892); Rosemount, In Inc. v. Beckman Jamesbury, 839 of the district court. F.2d struments, 1540, 1550, USPQ 727 F.2d 221 USPQ2d v. Four 1551, 1785; Bott 5 at at 1, (Fed.Cir.1984) (patentee 10 denied dam 1567,1576, Corp., USPQ2d 807 F.2d 1 Star see ages three-year delay); of a because (Fed.Cir.1986); Leinoff, 1210, 1216-17 726 Meyers, 912 F.2d at 1462-63, 16 also 741, 850; Studienge USPQ 220 F.2d at at 1057-58; Hydrau Advanced USPQ2d at Kohle mbH v. Eastman Kodak sellschaft Co., 477, Elevator F.2d 481 lics Otis 525 1315, 1325, USPQ 577, F.2d 206 616 2,186 1, (7th Cir.1975). 2 USPQ n. 4 n. The denied, (5th Cir.), 1014, cert. 586 449 U.S. period is measured the time 573, 101 66 L.Ed.2d 473 With S.Ct. reasonably should plaintiff knew equity, origins its determination alleged in known of the defendant’s have upon application not made fringing activities to the date of suit. Holmberg, 327 at "mechanical rules.” However, begin period prior 396, defense, does being at 66 S.Ct. 584. Bott, patent, 807 F.2d at issuance of the personal particular party eq to the Studiengesells 1575, 1216; nature, USPQ2d 1 flexibility must uitable Kohle, 1326, 206 A F.2d at Id. application. court must look at 616 chaft particular all facts circum- 587. 1544, Prods., (Fed.Cir.), USPQ2d Vaupel 5 1779 Textilmaschinen KG v. Meccanica 839 F.2d 870, 876-79, S.P.A., denied, Euro 944 F.2d 20 Italia 102 cert. (Fed.Cir.1991); Adelberg USPQ2d (1988); 1050-52 Corp. v. Seaman L.Ed.2d 57 Hottel Miles, Inc., USPQ2d F.2d 17 Lab. v. (Fed.Cir. USPQ2d Corp., 833 F.2d 1990); Shoe, (Fed.Cir. Meyers v. Brooks 1987); Corp., 807 F.2d Bott v. Four Star Inc., (Fed.Cir. USPQ2d 912 F.2d (Fed.Cir.1986); USPQ2d Mainland Indus. 1990); Studs, Leasing, Equip. Sun Inc. v. ATA Ltd., Standal’s Patents USPQ2d 1986). (Fed.Cir. USPQ (Fed.Cir.1989); esbury Corp. v. Litton Indus. Jam prejudice USPQ 442, (7th Material to adverse Cir.1943). Indeed, eco- parties resulting plaintiffs delay from the prejudice nomic is not a simple concept but to the laches defense. is essential Such rather is likely to be slippery issue to eviden-tiary. may either or prejudice be economic resolve. See Chisum, § 19.05[2][c]. netta, 851 F.2d at 1378. Evi- Cor A court must dentiary, prejudice, may “defense” also or arise consider and weigh any justification inability by reason of defendant’s offered plaintiff present delay. a full and fair defense on the mer for its Excuses which have records, its due to the loss of recognized instances, death of a been in some and we witness, unreliability or the of memories of do not mean this exhaustive, list to be events, long past thereby undermining the litigation include: other (Jamesbury, 839 the facts. Barrois ability judge court’s 1552-53, USPQ2d F.2d at 5 1785-86; at Inc., 881, (5th Faye, v. Nelda 597 F.2d 885 Corp., Hottel 1572-73, 833 F.2d at 4 Co., Cir.1979); Smith v. Sinclair 257 USPQ2d 1940-41; American Home at Ref. 328, 330, 183, USPQ (2d F.2d 118 184 Cir. Prods., 1123, 483 USPQ F.2d at 179 at 197- Co., 1958); Gillons v. Shell 600, 86 F.2d 98); negotiations (Baker with the accused 608-09, 1, (9th USPQ Cir.1936), 32 9-10 Mfg. Co., v. Mfg. Co. Whitewater 430 F.2d denied, 689, cert. 9, 302 U.S. 58 S.Ct. 82 1008, 1013-14, USPQ 463, (7th 166 466-67 (1937); VI Restatement Law L.Ed. 532 denied, Cir.1970), cert. 956, 91 Torts § 939 978, (1971)); S.Ct. 28 L.Ed.2d 240 possibly poverty and illness under limited circumstances prejudice may arise Economic (Fr F. Smith Hardware Co. v. possibly where a defendant and ank others will Co., Pomeroy S.H. 544, (2d 299 F. monetary suffer the loss of investments or Cir.1924)); wartime (Armstrong conditions damages likely incur would have Motorola, Inc., v. 764, 769, 374 F.2d 152 earlier suit. A.C. Auk prevented by been 535, denied, USPQ (7th Cir.), cert. 538 Co., erman Co. v. Miller 389 Formless 693 830, 95, 701, (1967)); U.S. 88 S.Ct. 19 USPQ 866; L.Ed.2d 88 American F.2d at 216 at Co., (Tripp v. extent of Mfg. Home Prods. v. United Lockwood 483 States, 1066, 1071, 872, 1120, 1124, USPQ 196, 198-99 (6th 406 F.2d F.2d 179 186 Ct.Cl. Cir.1973) USPQ 90, (1968); but see Baker Stevens, 157 94 (opinion by Judge later Co., denied, Mfg. Stevens), 1014-15, 166 cert. USPQ 430 F.2d Justice 414 at 467-68); 1158, 917, (1974); dispute ownership 39 110 over L.Ed.2d Smith, 27, (D.N.J.1920). patent (Maloney-Crawford Corp. Yates v. Tank 271 F. 31 Rocky Co., damages Mountain Natural monetary Such or losses are not Gas 494 merely finding 401, 403, 617, (10th those USPQ attributable to a of F.2d Corp. Cir.1974)). infringement. Jenn-Air liability equities may or Co., v. Penn 48, Ventilator 49-50, F.2d require plaintiff its communicate 419, (3d USPQ Cir.1972). Econom to the defendant. See reasons for prejudice every ic would then arise in suit. generally Chisum § 19.05[2][b]. Cornetta, 851 F.2d at 1380-82. The See patentee may A also defeat a lach- change

courts must look for a in the eco infringer engaged if es defense “has in position alleged nomic infringer dur particularly egregious conduct which would Caryonah Lake ing period delay. change equities significantly plain Improvement Corp., Assoc. v. Pulte Home Bott, tiff’s favor.” 807 F.2d at (7th Cir.1990). 903 F.2d On the TWM Mfg. See Co. USPQ2d at 1216-17. hand, pat- other this does not mean that a Corp., 346, 349, USPQ Dura 592 F.2d silently intentionally entee lie wait (6th Cir.1979) and cases therein. Dwight & escalate, watching damages copying may such a factor Lloyd Sintering, 27 F.2d at particular Conscious defendant, notice, weighing against whereas ly infringer, if he had where had good faith noninfringing ignorance could switched to a or a belief Rome Grader & Mach. v. J.D. merits of a defense product. may tilt matters Mfg. Adams 57 favor. (Fed.Cir. simplest purest or form

In the laches, need be no direct contact there 1984), presumptions, whether created the defendant plaintiff and between by judicial ruling, out of statute “arise plaintiff becomes aware from the time the fairness, public policy, considerations Barrois, 597 claim the suit. See of its until Cornetta, probability.” 851 F.2d at Cir.]; Safeway Stores v. F.2d at 884 [5th also, 301.02, 10 Moore’s § Foods, Quality Safeway III—14. (7th Cir.1970) (“For USPQ 112, 115 nothing put Historically, ap years [plaintiff] did to a statute of limitations sixteen claims.”) upon notice of law, the defendants plied only to at a com claims not to instances, may plaintiff the make In other panion equitable claim. Laches the was and then do objection to the defendant an only time-barring equitable for basis an nothing years. Leinoff, 726 F.2d more for Todd, 280, v. 309 288 claim. Russell 742, In at Lane & 220 850-51. at 1, 527, 1, n. n. 60 S.Ct. 531 84 L.Ed. 754 plain the found where Bodley, laches was (1940). However, the where reasons for infringement of and gave notice tiff no repose equally applicable of the claim were receiving delayed suit in order continue equity, equity at remedies law and the there salary from the defendant. Where a the courts inclined to became “borrow” relationship aor between has been contact period time from of limitations the statute during delay period the parties the against eq apply presumptively and it the the may give plain to an inference that rise 531; 288, 60 uitable claim. Id. at S.Ct. against its claim the tiff has abandoned Truitt, (10th 246, Pepper v. 158 F.2d defendant, lend themselves the facts Note, equitable Cir.1946); of analysis principles Developments under (see as laches Section IV estoppel, as well Limitations, 63 Harv. Law—Statutes of However, the defenses are infra). two 1177, (1950). practice This of L.Rev. indicated, As we laches not the same. have using a creating presumptions rebuttable plain on the reasonableness of focuses guide a ex statute of limitations as was evident, As tiffs in suit. will become legal tended to situations where the de equitable estoppel focuses on what equitable claims were not the same but reasonably led to fendant has been believe Dobbs, only analogous.12 D.B. Handbook Thus, for plaintiffs conduct. 2.3, at 43-44 on the Law Remedies § of laches, length delay, of the seriousness excuses, of prejudice, the reasonableness culpability conduct or defendant’s patent infringe faced with Courts weighed must be determine whether six-year dam ment actions “borrowed” unfairly alleged patentee dealt with age patent period limitation in the statute bringing infringer promptly suit. by 286, time now out section as the set sum, weigh all perti a court must district giving pre period for rise to a rebuttable making a equities facts decision nent in the sumption years of laches. The six on the laches defense.

statute, indicated, begins the date Presumption C. Laches The six of suit and counts backward. years begins patentee’s with a for explained Corp. in Panduit As court Co., knowledge for- 744 F.2d and counts Mfg. All States Plastic v. (3d Cir.1974); a an action to vacate presumptions on "borrowed” 12. Laches based decree, recognized, Henry United widely v. are for land condemnation States, statutes limitations sea, 640, (3d Cir.1931); injuries a tort example: wrongful 46 F.2d death steamship Co., by passenger against com County Angela N.Y. v. action Public Adm’r Naviera, (2d Cir.), pany, F. Companía, v. R.R. 592 F.2d McGrath Panama Cir.1924); longshore dismissed, (5th by claim a tort cert. line, (1979); against steamship v. Moore- a Lines, Inc., Morales to Selective Service men L.Ed.2d 897 claim (5th reemployment rights, 208 F.2d v. Jones & McCormack Act Leonick Cir.1953); Steel, (2d Cir.1958); of a an to cancel the sale Laughlin action 258 F.2d claim, Boettcher, seniority pay, mining Kelley 85 F. v. and back claim restoration 1898). Steel, (8th v. States 495 F.2d Cir. Gruca United Thus, periods ward. the two in real time our sister circuits that presumption rep- completely They unrelated. resents an balancing of the inter- only in common years. number of same ests of parties. “borrowing” peri section 286’s time Aukerman asks that we discard pre was, thus, od for the use of laches defense sumption of patent laches in cases and re an extension or modification of the “bor quire alleged infringer prove each of rowing” concept. Nevertheless, the sec the underlying factual elements thereby period tion 286 time embraced vir presumed. argues It that the presumption tually all prior circuits to the creation of of laches is as patent unfair in litigation as period this court as a reasonable for cre the presumption of prejudice eliminated presumption ation of a of laches in our decision States, Cornetta United Olympia cases. Aktiengesellschaft Werke (Fed.Cir.1988) 851 F.2d (in banc), 76-77, General Elec. which had previously been afforded the USPQ 107, (4th Cir.1983); Potter government by reason of an unreasonable Instrument Storage Co. v. Technology delay bringing in military a pay case. 190, Corp., 191, 493, 641 F.2d USPQ 211 support To change law, this in the Auker- (4th Cir.), denied, 494 832, cert. 454 U.S. man asserts prejudice that from delay time (1981); 102 S.Ct. 70 110 L.Ed.2d Wat patent in litigation is “overblown.” It ar- kins v. Northwestern Ohio Tractor Pul gues that defenses rest primarily on Ass’n, 1155, 1159, lers 630 USPQ F.2d 208 evidence, documentary eyewitness not ac- (6th Cir.1980); Studiengesells counts, that, if forget witnesses infor- Kohle, 1326, USPQ 616 F.2d at 206 at chaft 587 mation, it likely they is have done long so (noting growing unanimity a [5th Cir.] six-year period before the presump- among the presumption circuits on laches tion. It also infringer notes that an could six-year delay); General Elec. v.Co. file a declaratory judgment action. How- Bros., 724, 727, Sciaky 304 USPQ F.2d 134 ever, experience, our appellant which in- (6th Cir.1962); Naxon Telesign vokes, has been that testimonial evidence is Corp. v. Bunker Corp., Ramo 686 F.2d frequently critical invalidity to defenses USPQ 658, (7th Cir. always and almost respecting so unenforce- Gillons, 1982); 607, USPQ 86 F.2d at at ability. Further, in assessing the propriety Cir.]; Maloney-Crawford Tank [9th of the laches it presumption, cannot be Corp., 403-04, 181 USPQ 494 F.2d at at 618 patentee assumed that the generally makes Cir.]; Drug United Co. Ireland [10th charge which sup- would Candy (8th Cir.1931), 51 F.2d declaratory port judgment by action denied, cert. alleged infringer. simplest In the form of L.Ed. 577 laches, above, as indicated no contact be- presumption The of laches arising from a parties prior tween the occurs to suit. six-year delay more than in filing suit is Thus, argument support this does not consonant with the mainstream law. rejection of the laches presumption. length The period years— the time —six arguments by Other Aukerman that the compared reasonable presump- presumption places unreasonable burdens respecting tions situations, in other patentee persuasive on the are not as will year. which be as short as one McMa- apparent in the opin- become section of this hon v. Pan American Airways, World ion, infra, explaining pre- the effect of the (5th Cir.1962) (libel claim). sumption. presumption

Also provides yardstick sum, In reaching comparable we presump- conclude that the compa- results leaving rable circumstances tion of laches based six- rather than relevant any guidelines period, adopted matter without year previously to a district in our court’s exercise any precedent, of discretion. should be maintained. Prima event, court adopted presump- underlying a laches facie, critical factors of years ago tion Leinoff, presumed seven proof F.2d at laches are that the upon 741-42, agreeing delayed patentee filing with for more than suit years Specifically, after actual or constructive ments of the laches defense.

six knowledge alleged rejected in- any presumption the defendant’s the court respect fringing activity. prejudice developed which had the defense is evidence of other factors merely make it due fense Laches remains an court’s exercise ognition of a laches defense in the trial court establishment of the factors stances. Laches prejudice, delay despite presumption, lay inequitable It must be the foundation for the trial undue whether prejudice. Those is not be denied. discretion. light equitable judgment does emphasized by established of all recognize actual of undue mandate Where there every prejudice, proof the de circum factors would delay case. rec un pay cases, stating: U.S. Court of Claims Cornetta, Pepper prejudice, laches. government [223 ^[1571] Notwithstanding earlier cases to the United show lack of support Ct.Cl. we States], [v. 1575; [(Fed.Cir.)] or shift the burden to Brundage, 342]; reject the affirmative defense of can F.2d. at United prejudice rely any precedent on a contrary, 794 F.2d States], intimations in our notion if presumption delay ^[242] Deering in civilian see, plaintiff F.2d at at 246 long, e.g., [v. recognition presumption v. United Cornetta States laches, including prejudice the element of infringer, accused in in- patent a upholding presumption of the Our fringement suit does not conflict the with patent in cases based on a more than six- presumption prejudice elimination of a of delay bringing not year in suit does conflict pay the States in United a case. Unlike the Cornetta, in banc decision the in re patent the presumption, presumption suit specting a suit for reinstatement and back prejudice pay of economic involved in the officer,13 pay by military a which we ex specific case not after a time did arise Cornetta, upon In pressly proof reaffirm. Rather, period. presumption the arose unreasonable, in delay that a suit was the period delay from whatever of deemed was government presumption was afforded a of unreasonable, in some no more instances type presumption origi This prejudice. Furthermore, eighteen than months. the pay specific nated civilian cases. No presumption justified prin- not could be period gave presumption time rise to the ciples public The policy. of fairness or recognized regardless prejudice. It was Cornetta analyzed relationship court the length delay, delay the once the was government his between a soldier and Henry v. Unit found to be unreasonable. distinguishable pure- it was concluded States, 285, 290, ed F.Supp. Ct.Cl. ly relationships; commercial that an indi- (1957) months); (1 year, 10 United soldier at a disadvan- vidual was decided Lane, ex. Arant v. States rel. U.S. tage the might government; vis-á-vis 293, 294, (1919) (1 39 S.Ct. 63 L.Ed. 650 government and that the held the evidence States, months); Gersten v. United year, 8 reasons, prejudice. pre- these a For (1966) (5 Ct.Cl. 633 prejudice the sumption government Brundage v. United months); years, as a of fair- could be endorsed matter States, 205 Ct.Cl. 502 public policy. ness or denied, (1974), cert. (1975) (3 years, are not L.Ed.2d These “fairness” considerations Cornetta, months). patent litigation. court In a mili- this restored transferable case, requirement government tary to the pay prejudice es the economic was, fact, simply prejudiced by government it had held to be tablish that been if military pay damages of the suit pay having in a suit for win, general require- plaintiff namely, should a second proof accordance with original panel patent Auker sumption in this of laches in cases. A.C. decision case held pre- USPQ2d that the eliminated at 1623-24. Cornetta decision man salary occupied position. for the A pre- Prior to the effect of a presumption sumption prejudice of such would be effec- was Thereafter, debatable. such effect tively case, patent irrebuttable. In a eco- prescribed by Federal Rule of Evi- prejudice nomic to an infringer, accused dence August 1, effective 1975. That indicated, previously must something rule reads: damages more than the upon awardable Presumptions Rule 301. in General finding Moreover, infringement. unlike Civil Proceedings. Actions and government defendant faced with mod- In all civil actions and proceedings not est pay, private claims for back party provided otherwise for by Act of Con- patent litigation defendant in may be under gress rules, or these a presumption being financially threat of or crippled imposes on party against whom it is completely shut private down. Also in liti- directed the burden going forward gation, parties likely are more to be more with evidence to rebut meet pre- evenly reasons, matched. For these sumption, but does not shift to such par- unfairness of a presumption per- which we ty the proof burden the sense of the ceived in a litigation against soldier’s nonpersuasion, risk of which remains government does not pre- arise from the throughout upon the trial the party on sumption recognized here in a suit. whom it was originally cast. D. the Laches Presumption applies This rule Effect of “even if the common law presumption had been greater accorded a

By reason of the presumption, weight in past.” Moore’s, supra, equitable considerations, absent other 301.03, at III — 18. § prima defense of laches is out made facie upon proof by the accused infringer that As finally adopted after much patentee delayed filing suit for six scholarly debate, Rule 301 embodies what years after actual or constructive knowl “bursting known as the theory bubble” edge of the defendant’s alleged acts of of presumptions.14 Under theory, infringement. presumption, Without the presumption is not merely rebuttable but the two facts of delay unreasonable and completely upon vanishes the introduction prejudice might reasonably be inferred of evidence sufficient to support finding a length from the delay, but not neces of the nonexistence of the presumed fact. sarily. presumption, With the facts these Dept. See Community Texas of Affairs inferred, must be absent rebuttal evidence. Burdine, 248, 254-55, 450 U.S. explained Moore’s, As in 10 supra, 301. § 1089, 1094-95, (1980); 67 L.Ed.2d 207 Del 02, at III — 13—14: Bowers, 280, 286-87, Vecchio v. factual conclusion reached by infer- [A] 190, 193-94, S.Ct. 80 L.Ed. 229 In process ence is based a reasoning words, other the evidence must be suffi experience. and A presumption, how- cient put presumed to the existence aof ever, is a method of dealing proof, with fact genuine dispute. into presump The normally give greater to it a than effect tion compels production the of this mini it would have if it were solely by handled quantum mum party evidence from the process. the inferential against operates, nothing it whom more.

Numerous suggest Burdine, decisions indicate or 450 U.S. at 255 n. 101 S.Ct. at that the establishing six-year (“The defendant’s a ‘presumption’ n. 8 proper word delay is, proof, shifts the ly burden only that used refers to a device for allocat the ultimate burden of persuasion, ing burden.”) production (quoting the Flem patentee. the defendant to the ing Jr., For James, Geoffrey Hazard, exam- Jr. & C. ple, the 7.9, decision could (2d ed.1977) be read to Civil Procedure at 255 § Leinoff position. (footnote sum, take that omitted)). at This presumption a view of the presumption laches legally patentee presents is is not If the evidence. a which, unsound. believed, sufficiency of evidence if effect, 14. Rule deals presumptions may with state law and different. their favor finding in rected to the preclude a directed excuses discussed in section would evapo B, infringer, presumption supra, III pre- will eliminate the laches left to its infringer sumption genuine is if to rates the accused sufficient raise a is, infringer By would destroying presumption the accused issue. proof. That persua satisfy entirety upon presentation have its then to burden of evidence may justify delay, evidence. Del patentee sion with actual See Vec which chio, (pre by having at 193 disadvantaged prove at S.Ct. not to a Moreover, sumption negative. death “falls out such of accidental evidence is with- testimony patentee’s knowledge. sufficient proffer in the case” Moore’s, suicide). finding of justify a patentee may A similarly eliminate supra, 301.04. § presumption with an offer of evidence place sufficient to the matters of defense response the defen an initial As prejudice prejudice genuinely economic delay, six-year least dant’s evidence of at a Thus, patentee may issue. eliminate delay patentee may proof that the offer presumption by offering proof that no is, years&emdash;that that not in six has fact been prejudice occurred in additional the six- time it first learned or should period, i.e., year respect time that evidence after the known of the ing alleged infringer’s defenses remains years.15 pat- If a six issued was within substantially delay available as before the issue, no on this factual entee successful prejudice type and that economic presumption arises. Fromson West Cf. B, supra, delineated III section has Co., 853 F.2d Supply Litho Plate & ern occurred. (Fed.Cir. 1568, 1571, USPQ2d 1988). presumption Elimination of precludes patentee does not mean the presumption of laches Once defense; possibility of a laches it does arises, may proof direct patentee offer mean, however, presumption rebutting the laches factors. Such ed plays no in the ultimate deci role showing either evidence be directed to sion. facts of unreasonable patentee’s delay or that the was reasonable proved prejudice judged then must be prejudice suffered no defendant totality presented. on the of the evidence 349, 201 Mfg., 592 F.2d at both. TWM (6th Cir.1979); USPQ Maloney- at 435 Even if unable overcome the Tank, 494 presumption, patentee be able Crawford raising By genuine issue 618. application preclude of the laches defense respecting factual of a lach- either element proof infringer the accused was defense, presumption es of laches guilty pat- of itself misdeeds towards the Northwestern overcome. See Watkins v. maxim, This “He entee. flows from 1155, Pullers, 630 F.2d 1159 Ohio Tractor equity equity.” seeks must do who Cir.1980). (6th Finally, that, reiterate at all we Thus, times, presumption of laches bears ultimate defendant by persuasion of offering be eliminated evidence affirmative burden delay for the that the To the show excuse defense laches. extent state reasonable, 1461, delay Meyers, was even if such evidence ments in 912 F.2d 16 at Studs, rejected per USPQ2d 1057; may ultimately be at Inc. v. ATA Sun 349; 993, 978, Mfg., Equip. F.2d at 872 F.2d 10 Leasing, suasive. See TWM 592 Prods., USPQ2d (Fed.Cir.1989); at 1122- American Home 483 F.2d 1351 James 1785; USPQ2d only bury, 24. Such evidence need be sufficient 839 F.2d at 5 at Hottel, 1572, USPQ2d 4 at genuine respecting raise a issue the rea 833 F.2d at delay 1940; Bott, USPQ2d F.2d at 1 at sonableness of to overcome Evidence, 1216; example, di- Pat- presumption. for Mainland Indus. Standal’s McBride, Comment, Attributing Infringement, NW. 15. See Kevin G. Laches in Suit Patent (1985). Knowledge Corporation to a as an Element Rev. 698 U.L. Ltd., USPQ 772, ents 799 F.2d able and inexcusable: A.C. Aukerman (Fed.Cir.1986); 773-74 Leinoff, 726 F.2d at Co., Co. R.L. Chaides Constr. No. C-88- USPQ precedent or other 2074-SW, slip op. at 5. greater This was a otherwise, may suggest they expressly are burden patentee than the had to bear to persuasion overruled. The burden of does overcome presumption. patentee patentee’s not shift reason of the six- bears the only burden coming forward year delay. with sufficient evidence to genuine raise a factual issue respecting the reasonableness

E. Standard Review of its conduct once the defendant shows appeal On the standard of review in excess years. Here, of six Auker- of the conclusion of laches is presented abuse that, man evidence during part court, however, An appellate discretion. delay, it engaged litiga- other discretionary set aside a decision if tion. The district rejected court this ex- decision rests on an interpreta erroneous cuse because at no time give did Aukerman clearly tion of the or on law erroneous Chaides notice litigation of such and of its underpinnings. factual If such error is intention to upon sue Chaides its conclu- absent, the determination can be over However, sion. there can rigid be no re- if only rep turned the trial court’s decision quirement judging a laches defense that judgment resents an unreasonable given. such notice must be If a defendant weighing Vaupel factors. is, relevant Textil example, aware of litigation maschinen v.KG Meccanica Euro Italia sources, from other place it would form S.P.A., 870, 876, USPQ2d 1045, 944 F.2d over require substance to specific notice. Indus, (Fed.Cir.1991); PPG v. Cela Vaupel KG, Textilmaschinen 944 F.2d at Polymer Specialities nese USPQ2d at 1051. Where there is 1565, 1570-72, USPQ2d 1010, 1015-16 prior contact, equities the overall may re- (Fed.Cir.1988) (Bissell, views); J. additional quire notice, appropriate as in Jamesbury. States, Oliveira v. United However, requirement a notice is not to be (Fed.Cir.1987); Friendly, see also H.J. rigidly imposed as the district court did Discretion, Emory Indiscretion About this case. L.J. Similarly, we believe the court If the decision on laches is made on resolving erred in the issue of whether the summary judgment, must, there in addi infringing defendant’s changed activities tion, fact, genuine be no issues of material sufficiently disrupt period. It proof

the burden of of an issue must be disputed is not that defendant’s conduct allocated, correctly pertinent and all changed during the laches time frame both Moore’s, factors must be considered. See 6 by manufacturing slip-forming its own ¶ (2d 1990). supra, ed. Accord 56.17[38] device greatly increasing Mfg., 592 F.2d at TWM asymmetrical amount poured. it wall (summary judgment overturned for supra n. It could not be inferred failure to consider egregious defendant’s against patentee the changed these conduct). circumstances should have been known to patentee or were immaterial to F. Laches in This Case Upon determination of laches. the record Because we conclude that the dis us, summary before judgment of laches trict court shifted the ultimate burden of improperly granted. was The issue of lach persuasion patentee negate to the es must be tried. laches, prima defense of the district facie grant summary judgment court’s on the Laches laches defense must be reversed. G.Effect Defense The district court stated it The district court ruled that laches placed patentee the “burden” on the patent “of can relief in only bar suit showing not infringement prior general unreason- to suit. The [that its] rule) 3, 1991) (stating general No. partial entire Draft may or laches bar

rule is that (Third) cited therein. and cases Restatement relief. of Unfair (Tentative Draft No. Competition § precedent in trademark The above cited (Second) Torts 1991); Restatement dichotomy that the persuasive cases is not raised (1977). question was A cmt. c § given to the defenses of laches in the effect concerning this opinion original panel in estoppel patent in cases defense. of a laches in the effect difference cases, patent In should be eliminated. Aukerman, USPQ2d at 1623 n. 4. A.C. rights, protection patent limited term of remanded, it this case will be Inasmuch distinguishes such cases usually years, for the this issue to address appropriate protection from trademark cases where can court. of the district guidance may and laches be of indefinite duration 523-24, Holt, 128 U.S. at v. In Menendez See, e.g., correspondingly run for decades. infringement 145, a trademark 9 S.Ct. Drug v. Theodore Rectanus United Co. case, said: Supreme Court L.Ed. 248 U.S. de- acquiescence cannot delay or Mere (laches nearly years). (1918) period of injunction support in remedy by feat the Moreover, public interest in avoidance it has been legal right, unless of the place may lead a in the market of confusion under such circum- long so continued against grant injunction trade- court to right itself.... stances as defeat alone. infringement on laches mark See such as to to avail must be Acquiescence (Third) Competi- Restatement of Unfair right in the defendant.... create a new Draft No. (Tentative at 32 tion § of is com- complained far as the act So 1991). may defeat the rem- pleted, acquiescence in the effect of The stated difference applicable ac- principle when edy on the estoppel has served well em- laches and strength of encour- taken on the tion is in required more the overall phasize that it, far as the act is so agement to do but simple alleged laches if an equities than future, progress and lies wholly patentee’s infringer bar a seeks equity is not intervention of right to the Probably statement of claim. no better in re- by previous delay, lost generally limiting a laches defense reasons for estop- of an elements spect to which the found past acts can be than patent cases rarely pel could arise. 24Mfg., George Meyer Mfg. Miller J. Fleming, also McLean F.2d-505, (7th Cir.1928): Courts, including 24 L.Ed. 828 special peculiar There are reasons (see, Leinoff, 726 F.2d at e.g., court not patent should be why the holder of 850), in reliance inter enforcing right from his under barred decision, have held on the alia Menendez of his failure to patent because patent de- damages for a laches bars infringers. Frequently the promptly sue but pre-filing fendant’s (financial patentee position damages injunctive relief post-filing otherwise) prevents the institution estoppel are established. elements unless pro- litigation is often suits. law, courts have some other areas expensive. Moreover longed and Court created Supreme that the concluded thing cannot he very nature of restricting which a the effect per se rule no infringements that fully cognizant of all the defense court afford district length and throughout the breadth occur continuing Under that tort. on a laches may be country. information of this His only in view, all relief but bar Then, also, validity hearsay. largely Accord Creswill circumstances. egregious there- patent of his and Pythias, Lodge Knights v. Grand here, be, disputed. as These 822, 827, 56 L.Ed. questions fact present mixed defenses Pittsburgh v. (1912); University is neces- concerning there which (3d law Prods., F.2d Champion uncertainty. In sarily some doubt (Third) Cir.1982); Restatement Unfair cases, cases, in most if not (Tentative many Competition at § infring- are serious ones. For an doubts we have no reason to accepted revisit this naturally making er avoids principle. [an exact]

copy patent. In a doubtful case

the commercial patented success of the IV.

art is at times determinative of the issue EQUITABLE ESTOPPEL validity. This factor cannot be shown A. Principles General Moreover, save as time establishes it. experience proves common that inven- Equitable estoppel to assert a appear tions which to revolutionary claim is another defense addressed to the accepted by public are often not and sound discretion of the trial court. James never become a commercial success. A bury, USPQ2d F.2d at 1786; at patentee justified waiting is therefore Werke, Olympia USPQ F.2d at to ascertain equal whether realizations 110; Studiengesellschaft Kohle, expectations. F.2d at USPQ at 586. Where think, therefore, justi- We that there is equitable estoppel established, all relief patent withholding fication suits for a claim be barred. Id. Like lach damages infringements committed es, equitable estoppel is not limited to a prior commencement of the suit particular factual situation subject nor established, when laches is notwithstand- by simple resolution or hard and fast rules. ing injunctional But, granted. relief be most, At courts provided general wrong. ly ing relief would cord Naxon fendant As an additional future relief should be a series of Finally, bill dismissed. patent, all relief should be denied and the when self from stated presumption of laches if there is patent in it in the usual has, by Relief from USPQ can be cover a continuing wrongful asserting generally Telesign Corp., general addition to his reason, at 662-63. afforded to a shown single wrong conduct, estopped laches situation. Ac- rule had to be broad- his barred be denied liability that we do not believe rights being guilty only as a 686 F.2d at as well as under the acts. All holder of result of a find- single past him- provide de- ing factual tillation from the case law: have been flects guidelines based on permitted to be harmed true ent with his earlier conduct. The following misleading way, or silence. communication. who three An [equitable] estoppel case ... has a reasonable and generally usually facts, important unifying litigated, elements of materially communicates ^[2] must have assert are statement of the The other elements. either ^[3] set of deemed albeit fact And the other would any fairly if the actor is later equitable knowledge principles. relies claim inconsist- patterns words, something attempting significant ^[1] complete dis- upon underly- estoppel conduct which actor, in a re- tween the rule stated in our wrongs, only partial general but not future rule necessarily defense. No conflict be- wrongs, precedent exists. is viewed Remedies combined into ties, elements liance” requirement. § 2.3, ^[2] at 42. single See, ^[3] In other authori- “detrimental re- are e.g., frequently 5 Chisum 19.05[3], However, at 19-189. the state- § event, any we will continue to separate ment of reliance and detriment as hold, policy, as a matter of that laches bars clarity confusing factors adds some this patentee’s only relief on a claim with re area of the law.16 spect damages prior accrued to suit. Leinoff, laches, at 850. estoppel Unlike case, presented At least on the facts require passage does not of an unrea- However, equitable estoppel 16. Some other statements of resentation of fact to another." principles example, are narrower. For The Re- authority misleading concept sets out the silence (Second) 894(1) (1979) statement Torts § re- independent as an defense. quires person misrep- that "one make a definite 1042 plaintiff patentee in the ac by the filing How- turbed suit. period time sonable currently former is come in which the have tivities

ever, cases which patentee’s The conduct must involving engaged.17 the issue of this court before suing pat- have delay supported an inference that inequitable patentee’s infringe not press the defense invariably raised did not intend to entee almost estop- equitable infringer. also of against alleged laches but only of ment claim case, such a Jamesbury, thus, estoppel pel. clear, equitable In which It is that requires: estoppel equitable that infringer we stated unaware— alleged cannot be delay patentee inexcusable under laches—of the (1) possible and as is unreasonable infringer, suit, (2) alleged infringer to the prejudice patent. The filing and/or its patentee conduct (3) reasonably affirmative be able to also must know it abandoned inducing the belief that known of the patentee infer that the has infringer, alleged against the [la- claims In for some time. former’s activities (4) and to include defined situation, spe silence] ter patentee common most infringer. by the reliance detrimental currently cifically objects to the activities in the suit 1553-54, USPQ2d 1786. asserted as at 5 F.2d at 839 up years. not follow earlier case then does listing factors followed This Judge Learned Olympia Lloyd Sintering, Dwight & our sister circuits. law in 109; regularly 77, USPQ estoppel was at Hand noted that Werke, F.2d at 219 712 Formless assurance v. Miller on “no further Co. based [that Aukerman A.C. 866, 701, USPQ competitor 216 at sued Co., F.2d at known would than] 693 require The same 27 F.2d patentee’s long therein. inaction.” at cited cases v. Adelberg ample subsequent precedent Labs. are stated in There is ments 827. where, 17 Inc., Miles, estoppel may arise equitable 1111, (Fed.Cir.1990); Meyers factors, USPQ2d patentee’s 1115 coupled with other 1461, 1459, Inc., F.2d essentially 912 is mis “misleading v. Brooks Shoe conduct” (Fed.Cir.1990); 1055, Hot USPQ2d Corp., 1057 leading Hottel inaction. See 1573, USPQ2d at 1573-74, USPQ2d F.2d Corp., 833 at at tel at F.2d However, 1941; 721 F.2d at Young Eng’rs, plaintiff’s cited therein. cases USPQ 1153. other at facts inaction must be combined be relationship or contacts respecting the Jamesbury test out The set give rise to the neces parties tween the elements of confusingly intertwines the against the claim inference that sary is ex estoppel and equitable Id.; A. Auker is C. defendant abandoned. filing Delay in suit pressly overruled. Co., 693 F.2d v. Miller Formless man Co. the assess influences which be evidence 866; USPQ v. West Jensen is patentee’s conduct ment of whether Inc., 650 F.2d Mfg. Irrigation ern & requirement misleading it is not but Cir.1980); (9th USPQ such estoppel. Even where equitable Metco, Corp. Coatings Continental estop equitable concepts of present, the is 1379-80, Inc., F.2d from one anoth are distinct pel and laches Cir.1972). (7th 423, 426-427 er. element, reliance, is not a equitable The second element of The first is essential to but requirement of laches or con statements estoppel concerns the estoppel. Heckler Communi- equitable “communi must patentee duct of 51, 59, 104 S.Ct. Svcs., 467 U.S. ty Health misleading way.” something in a cate (1984). The 2223-24, L.Ed.2d case, as well “something” with which fact, that, in infringer show must estoppel accused majority as the vast misleading concerned, substantially relied it patent field in the cases in connection with patentee dis- conduct infringer will not be the accused inventorship co-ownership and MCV, claim of King-Seeley Thermos eluded Inc. v. But see 1568, 1571-74, patentee). USPQ2d against estoppel pre- (Fed.Cir.1989) (equitable taking some action. Reliance is not the elude that the district court improvidently harm, prejudice although same as or fre- granted summary judgment in this case. quently infringer An confused. can build The district court concluded that Auker- being entirely plant patent. unaware of the man’s conduct led Chaides to believe Auk- infringement, infringer As a result of the erman claim, had abandoned its that may facility. be unable to use the Al- Chaides had relied on Aukerman’s conduct harmed, though infringer the could not detriment, to its and that Chaides was not patentee’s reliance on show conduct. reliance, guilty infringer of unclean To show must hands which would bar relationship had a or communication with Chaides from assertion equitable of an de- plaintiff infringer which lulls into a fense. We conclude that sup- the elements security going sense of in ahead with build- porting equitable estoppel genuine were in ing plant. dispute, that the evidence per- was not ceived in

Finally, infringer light accused must most favorable to Auker- materially preju establish that it would be man, that inferences of fact were drawn patentee permitted diced if the is now to against Aukerman and that the entire issue laches, proceed. may As the prejudice must, event, in any light be tried in change position be economic or loss of principles adopted here. See, e.g., Hydraulics, evidence. Advanced 481-82,

525 F.2d at at 4-5. dispute initial is whether the patentee’s conduct misleading in significant Another that difference from laches that presumption reasonably no adheres Chaides inferred from Auker- equitable estoppel Despite to an defense. man’s conduct that it would be unmolested filed, six-year delay in being suit a defen using in Aukerman’s invention. Chaides prove dant must all of the factual elements argued that this factor was shown estoppel discretionary pow which the last letter from setting Aukerman er court rests. The reasons for this taking deadline for a license followed First, presumed are two-fold. plus years nine of silence. Aukerman ar factors, is, unreasonable and inexcusa gued prove that Chaides had to intention prejudice resulting ble therefrom ally misleading silence. The district court estoppel. Second, are not elements of properly rejected argument Aukerman’s re granted estoppel relief broader than specting prove the need to intent to mislead laches. Because the suit whole be Hottel, 1574-75, on the basis F.2d at barred, we conclude that the defendant USPQ2d at 1941-42. How one character carry should a burden to establish de patentee’s izes a silence is immaterial. proof, fense based on not a presumption. focused, Properly the issue here is whether Finally, must, the trial court even reasonably Aukerman’s course of conduct equitable where the three elements of es- gave rise to an inference in Chaides established, toppel are take into considera going Aukerman was not to enforce any respect tion other evidence and facts patents against the ’133 and ’633 Chaides. ing equities parties exercising Hottel, 1574, USPQ2d 833 F.2d at deciding its discretion and whether to allow Moreover, 1942.18 silence alone will the defense of to bar the estoppel estoppel create an there unless was a clear suit. (see duty speak, F. Reay Raynor, Application Equitable B. Estoppel (C.C.S.D.N.Y.1884)), or somehow Against Aukerman patentee’s continued silence reenforces plain the defendant’s inference from the equitable estoppel may While summary judgment, acquiescence determined on we eon- tiff’s known that the defen- equities. 18. This was called "bad faith” silence in Hottel. affect the Bad faith si- overall However, wrongful fraud intent is not neces- may encompass lence cases where there is a hand, sary estoppel. to create an On the other duty speak. present, where mens rea is such considerations contentions, construing the sum- Aukerman’s Finally, on unmolested. dant will be he could not testimony must be the of Mr. that inference Chaides judgment, such mary the any the between inference from evidence. remember differences possible only copy except and the in size as original corre- Aukerman/Chaides the In view of noninfringement of inasmuch evidence to position in a was spondence, Chaides produced no evidence demon- Aukerman stating any infer, reply following Chaides’ copy infringed pat- strating “how the Gomaco’s, that infringement problem was ents.” remaining Aukerman abandoned silent length that, The of against disagree Chaides. the court its claim We drawing the inference delay also favors had the litigation, Aukerman phase delay, stronger longer the infringed. prove copy because to that burden argues Aukerman becomes. the inference a mo court was not The issue before the by reason of delay is excused that summary judgment by Aukerman for tion others, though even against litigation summary infringement a motion for of but litigation. not of was informed Chaides estoppel by equitable of Chaides. judgment the mark. However, argument is off concession of non- Aukerman’s Absent notify an accused generally must party A Chaides, given, not infringement, clearly litigation for it infringer other about movant, proof of had the burden estoppel. equitable of impact the defense and which the device which Chaides built 877, USPQ2d at 944 F.2d at Vaupel, “copy” infringe. not Nu all call a did Cf. 1573, USPQ2d 1050; Hottel, at States, trition 21 United Studiengesellschaft also at 1940-41. See (Fed.Cir.1991) USPQ2d 1347, USPQ 591. Kohle, F.2d at (at stage, the mov- preliminary injunction logic. is a matter of “requirement” This showing likelihood of ant carries burden of into logically not enter litigation can Other issues). disputed Under this on all success infer- reasonably drew an whether Chaides burdens, testi of Mr. Chaides’ assignment sued if such facts it would not be ence that in concerning “copy” of the mony are not known Chaides. device, light in the if fringing construed Aukerman, could amount nonen- most favorable favor the the above factors While denial, admission, infringe inference, to an further Chaides’ forcement and, least, fact. raises an issue of only re- ment that Aukerman would statement event, summary for year any purposes could lead one in In cover $200-$300 copying should judgment, infer that Aukerman Chaides’ position Chaides’ weighed into in issue to be the amount been deemed misconduct did not sue because decision, not. minimis, Aukerman was it was not that the court’s but was de against Chaides abandoning its claim summary judgment, conclude that We quantum. At most regardless all time equitably es- was holding that Aukerman waiving merely have been could Aukerman topped assertion year. per infringement claim for $300.00 an Chaides, improperly granted against inferences which In view of different issue is remanded and is reversed. The exchange of corre- from the could be drawn trial. court drew clear that the

spondence, it is against Auker- inference an unfavorable V. summary impermissible on That is man. QUANTUM OF PROOF

judgment. addressed previously Chaides, This court has not Auker- Respecting misdeeds must evidentiary burden of what inequity the issue guilty of argued Chaides was man seeking prove by litigants met The be of the mold. by building “copy” defense. estoppel or an was no evidence there court concluded that quantum question Because infringed patents, “copy” that the area within this every case cases arises the burden bore on which Aukerman issue conclude jurisdiction, we exclusive of our court discounted proof. district Federal imposition that a uniform Circuit rule should the clear and convincing adopted. quantum proof. Indeed, to the limited extent courts have touched issue, on this proof typically judge- Standards of are great weight of authority appli favors requirements “shaped made in accordance cation of general preponderance of evi process of due with considerations and/or dence standard. Shultz, Moore v. 491 F.2d importance of certain facts.” SSIH 294, 300, USPQ 548, (10th 180 Cir.), 553 Equip. v. S.A. United States Int’l Trade denied, cert. 419 U.S. 95 S.Ct. 42 Comm., 365, 380, USPQ 678, 718 F.2d 218 (1974); L.Ed.2d 161 Lotus Dev. Paper J., (Nies, comments) additional (citing 691 Int’l, back Huddleston, F.Supp. 740 Herman & MacLean v. 15 459 Software USPQ2d 1577, (D.Mass.1990); 375, 389-90, 683, 691-92, Sim S.Ct. Baker, mons Co. (1983)). F.Supp. 149, 154, L.Ed.2d 548 USPQ (D.Mass.1961), 315-16 aff'd, proof, of a The function standard of as (1st Cir.1962); 307 F.2d 458 Pratt & Whit concept that is in the Due embodied Canada, ney Inc. v. States, United and in Process Clause the realm of fact- 777, 788, USPQ2d 1497, Cl.Ct. (Cl. finding, is to instruct the factfinder con- Ct.1989), aff'd, (Fed.Cir.1990). 897 F.2d 539 cerning degree of confidence our so- Accordingly, ciety we hold “preponderance thinks he should have in the cor- that par- rectness of factual conclusions for a evidence” is the appropriate eviden- type adjudication. tiary ticular of standard to establish the facts relat ing to the laches issue. Winship, In re 1068, 1075-76, (1970) (Har- 25 L.Ed.2d 368 The case respecting proper law stan lan, J., concurring). proof dard of supporting for facts the de litigants generally In civil cases are re- fense of estoppel is less uniform. quired prove by preponderance facts of many required While courts have that such McCormick, See McCor- the evidence. C. proved by facts larger quantum be some of (2d ed.1972); mick on Evidence 9 J. § preponderance, evidence than a many oth Wigmore, Wigmore on Evidence § applied ers have the basic standard. See (Chadbourn ed.1981). “[Ejvidence prepon- Rydstrom, Annotation, Quantum or J.F. convincing it is more derates when to the Degree Necessary Evidence to Prove an opposing evidence.” McCor- Equitable Estoppel, trier than the (1965) 4 A.L.R.3d 361 mick, supra, higher at 793. The standard Moreover, and cases cited therein. cases convincing” proof typically of “clear and is adopted greater which have than ordi employed danger deception where the nary proof implicated burden of have often present {e.g., establishing the terms of a previously one of the special mentioned will), particular lost where claim is disfa- See, e.g., Chrysler Credit considerations. policy grounds {e.g., vored on reformation Corp. v. First Nat’l Bank and Trust or modification of a written contract), or (3rd Cir.1984) (apply particularly important where a individual clear, ing precise, unequiv standard of and reputation interest is at stake such as one’s Pennsylvania ocal evidence under law influence). {e.g., fraud or undue Id. at 797- estoppel where elements of the defense 98; SSIH, 380-81, 718 F.2d at under that state’s law include fraudulent convincing 691. The clear and standard conduct); Bally’s Prize Prods. v. Steak imposed aspects has also been in some (7th Foolery, Tom Cir. patent litigation by specific reason of the 1983) clear, (applied satisfactory con statutory provision patent pre- that a vincing appellant standard where contend However, sumed valid. neither laches nor guaranty ed that oral should enforced estoppel patent’s validity. attacks a frauds). notwithstanding statute ex As Estoppel plained

The issue of laches concerns in 28 Am.Jur.2d (1966), party one and harm to another. Neither Waiver § at 830-31 the dis implicates type spe agreement appropriate of these factors over the standard real, typically trigger apparent cial considerations be more than law are returned con- be- distinguish failure because common formity their law traditional the evi- weight of or quantum tween concept. In all of this there is full role and implication and the substance dence agreement. eq- an required establish the evidence say, is to while estoppel; opinions uitable court in banc eq- significant respect, to establish how- upon in one panel relied facts differ clear, to do with positive, question of what must be ever—the estoppel uitable year presumption of laches. six implication, so-called in their unequivocal presumption as it had agree All not be established facts need these (or at least it had sometimes developed preponderance a fair than any more longer appropriate as applied) is no been the evidence. of law. matter & 365. 4 A.L.R.3d at 363 Estoppel, also that, panel original concluded The event, special con since no any the rule earlier announced in keeping with by the defense implicated are siderations with the in Cornetta1 consistent banc and. defined it as estoppel we equitable proper place, to of laches the restoration of evi preponderance herein, adopt the we simply should be abolished—it presumption proof connection with the standard in dence purpose. A ma- serves a useful longer no factors, special estoppel absent go unwilling is jority of the court that circumstances, fraud or intentional such as far. alternative arrived the misconduct. two-part identify is to a in banc court on two elements of presumption, based the VI. laches. years filing delay A of more than six CONCLUSION unreasonable and presumed suit reasons, reverse foregoing we the For pro- puts That the burden inexcusable. and re- summary judgment ruling on plaintiff to come forward with on duction court for the district ease to mand this delay. The explanation for bur- some this consistent with proceedings further delay unrea- persuasion that the was den of opinion. inexcusable remains with the sonable and The other raised issue. who defendant VII. is that the presumption part of harm to defen- cause of material was COSTS charged speak plaintiff is Again dant. its own costs. party pays Each first, remains persuasion the burden and REMANDED. AND REVERSED defendant. with the presumption are ‘burst- parts of the Both concurring in PLAGER, Judge, Circuit raises Any that a ing evidence bubbles.’ dissenting part. part, causes of relevant fact that genuine issue of this in the work totally disap- interested Readers presumption part of the changes Further, to understand announces that court wish the court pear. simultaneously having taken bursting the court of one bubble that resulted from is, pre- That the other bubble. banc, following publication bursts this case in issue of fact addressed to of an sentation opinion, panel which original of the exam- presumption part either See, v. R.L. Aukerman Co. A.C. vacated. —for the other bursts ple, delay automatically 90-1137, No. Constr. — Chaides harm—as part here, well. 1991 WL — USPQ2d (Fed.Cir. Apr. I U.S.App. why find LEXIS are several reasons There part re- today join confirms the 1991). myself The decision unable First, the court opinion. forth in while principles set court’s adopts the banc and sult of con- arise out presumptions court’s for the period of the invocation bubble,’ bursting creative, while seems un- presumption) only “have in common the necessarily complicating. years.” (See Majority same number of Perhaps this is a quibble. mere 1035). law- Opinion p. No That other circuits yer who carefully reads the court’s formerly used the instruc- statute as the measure is case, tions this ground who has continuing best a weak even a rule remotely case, respectable should acknowledged justifica- any that has so little difficulty in creating preferable tion.2 It the factual showing would seem to leave parts will cause both flexibility presump- the trial court the to determine tion to when is ‘burst.’ And there invoking there sufficient basis can be little doubt that presumption, judges factual if one the trial will is needed. understand when to brush the presumption aside and Third, presumption such as that in- get to the merits of agree the case. I typically designed volved here place is nevertheless with the old Shaker song that upon party special knowledge with gift ‘Tis the simple,4 to be a notion that facts coming burden of forward rules; particularly applies legal to that knowledge. part Here the second I extent respectfully dissent. presumption, harm, presumption opposite. does the The burden eviden- production

tiary placed plaintiff, on the likely least party know the facts ways

about how and in what the defendant by delay.

was harmed recog- The court anomaly, responds

nizes by to it

creating bursting a ‘double As bubble.’ revolting automatically 2. "It is to have judgment. no better reason for a entitled to There rule of law than that so it was laid down in discretionary by remains a determination Henry revolting time of IV. It is still more if judge, appeal. trial reviewable grounds upon which it laid down have since, long persists simply vanished and the rule simple gift gift 4.'Tis to be ’Tis to be past.” from blind imitation of the Oliver Justice gift you free 'Tis come down Where Holmes, Law, Wendell The Path 10 Harv. ought to be ... L.Rev. melody song Copland Aaron made the of this by Appalachian famous use of it in the ballet 3. The of the verb his use "allow” is deliberate. The song Spring. court makes clear that even when a itself was defendant orchestrated part both Copland establishes delay unreasonable and made of a set of Old inexcusable American harm, Songs performed defendant William Warfield. nevertheless first notes opinion. Estoppel original panel Cir.1988). States, (Fed. United 1. Cornetta v. 1Q47 fairness, public policy, siderations of above, noted the bubble is burst only (see probability Majority Opinion p. by a .showing factual that relates to one 1034), explicitly the court never addresses part of the presumption, but also by a compel how these pre- considerations factual showing that other, relates to the sumption in patent of laches cases. Absent factually different, part of the presump- persuasive explanation why as a mat- tion. This is a concept, per- remarkable public ter of policy fairness it is neces- haps unique in presumption law. sary presumption, to have this it remains Maybe a case that, can be made after problem unclear presumption to what time, some plaintiff’s delay in bringing a solution. suit would raise factual inference or pre- Second, candidly acknowledges the court sumption unreasonableness, allowing de- ‘borrowing’ that the year period of the six fendant judgment to obtain particu- Act, from section 286 of the Patent issue, lar absent rebuttal.3 But it is diffi- presumption, measure of the term of the imagine cult to the cáse presumption for a separate creates two year periods six harm, which allows a defendant to win if functionally practically are unrelated. plaintiff cannot establish contrary, it, put (the As the court the two rules when the relevant facts will invariably be period damages statute’s and the in the hands defendant. The ‘double

Case Details

Case Name: A.C. Aukerman Company v. R.L. Chaides Construction Co.

Court Name: Court of Appeals for the Federal Circuit

Date Published: May 19, 1992

Citation: 960 F.2d 1020

Docket Number: 20-1437

Court Abbreviation: Fed. Cir.