Research in Motion: Purported Inventor's Late-Filed Lawsuit Dooms Claim of Co-Inventorship Because Laches Based on Economic Prejudice Bars the Claims

June 1, 2012

In this dispute over the inventorship of a patent that is integral to BlackBerry products, the district court held a bench trial on the applicability of laches. The issue at the bench trial turned on whether RIM suffered economic prejudice as a result of plaintiff's delay in bringing the lawsuit.

The complaint to correct the inventorship of the patent-in-suit was filed on August 1, 2011. After a summary judgment motion disposed of the state law claims, the district court found that RIM had established a presumption of laches on the correction-of-inventorship claim but the plaintiff had rebutted the presumption by showing a lack of evidentiary or economic prejudice that resulted from the unreasonable delay in bringing the lawsuit. The district court then ordered a bench trial to resolve the disputed issues of fact as laches is an equitable defense that is heard by the court and not a jury. After the bench trial, the district court made various findings of fact.

The district court framed plaintiff's argument as follows: "Plaintiff's primary arguments against a showing of economic prejudice boil down to one simple concept: that after RIM conducted its 2004 investigation, the die was cast. Put another way, plaintiff's claim that no lawsuit by plaintiff, no further evidence provided by plaintiff, would have caused RIM to have altered its course; therefore, there is no support for a nexus between plaintiff's delay and any of the things defendant says it did in reliance on plaintiff's inaction, or what it would have done alternatively had plaintiff in fact acted."

As part of the findings of fact, the district court found that "[a]t the time that plaintiff knew or should have been on inquiry notice of his claims, the only patent that had issued arguably relating to plaintiff's PageMail invention - i.e., the software solution that plaintiff had developed and alleges is the basis for BlackBerry's email technology - was the '694 patent. Krishna Pathiyal ('Pathiyal') testified credibly as to RIM's intellectual property strategy, how the passage of time has impacted that strategy with regard to the '694 patent and 1-3 RIM's internal investigation of plaintiff's claims in 2004."

As a result, the district court disagreed with plaintiff's position and found it had no support in the record: "Plaintiff's position finds no support in the record. While it is true, as this Court has found above, that RIM did conduct an internal investigation of plaintiff's claims in 2004, that investigation was based solely on the information to which RIM then had access. Plaintiff claimed to have more but his alleged evidence never materialized. It would be incredible for a business to have made a major strategic decision not to pursue a patent family because unsubstantiated assertions had been made. Equally, there is no evidence in the record, and there is evidence to the contrary, that had plaintiff in fact come forward with credible evidence of ownership, RIM would have seriously reviewed it and, if merited, undertaken an appropriate alteration in courser."

Based on the detailed findings of fact in the opinion supporting these statements, the district court then rejected plaintiff's claims: "Based on the extensive evidentiary record and the credible testimony from Pathiyal, RIM certainly suffered economic prejudice directly related to plaintiff's delay in bringing suit. Equity does not condone, and this Court will not allow, a plaintiff to make unsupported allegations of ownership, disappear for years while a company builds a successful business strategy around the very invention in which he asserts an interest, and then allow him to bring an untimely lawsuit."

Tahir Mamood v. Research in Motion LTD., Case No. 11 Civ. 5345 (KBF) (S.D.N.Y. May 16, 2012)

The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Stan Gibson at 310.201.3548 or SGibson@jmbm.com.