December 2012

Spotlight Info

In Hor v. Chu, No. 11-1540 (Fed. Cir. Nov. 14, 2012), the Federal Circuit reversed, inter alia, the district court’s SJ that the plaintiffs’ claims to correct inventorship under 35 U.S.C. § 256 were barred by laches. The patents-at-issue, listing Ching-Wu Chu as the sole inventor, were filed in 1987 and 1989, and issued in 2006 and 2010.  Plaintiffs Pei-Herng Hor and Ruling Meng, who worked in Chu’s research lab, filed suit to correct inventorship.  Relying on the language of § 256, the Federal Circuit held that a claim for correction of inventorship does not begin to accrue until the patent issues.  Further, the Court held that an omitted inventor’s failure to seek correction under 35 U.S.C. § 116 or § 135 does not prevent the inventor from challenging inventorship under § 256.  Because Hor and Meng filed their claims within six years of the issuance of the patents-in-suit, the Court reversed the district court’s SJ in favor of Chu on the affirmative defense of laches.  See this month’s edition of Last Month at the Federal Circuit for a full summary of this decision.