Magistrate Judge Burke recently issued a report and recommendation recommending denial of a patent-infringement defendant’s motion for summary judgment of laches. The defendant, Bard, had launched several prior products in the years before the litigation with the plaintiff, Gore, began. There was also prior litigation between the parties beginning in 2003 relating to the same products. W.L. Gore & Associates, Inc. v. C.R. Bard, Inc., et al., C.A. No. 11-515-LPS-CJB, Report and Recommendation at 1-4 (D. Del. Nov. 11, 2015). Accordingly, Judge Burke began by finding that the presumption of laches from a six-year delay applies because a period of eight years passed between Bard’s launch of its earliest product in 2003, which had similar features to those accused of infringement, and Gore’s filing of the suit in 2011. Id. at 7-9.
Gore responded, however, that its delay in bringing suit was justified. First, Gore asserted that it was justified in not bringing suit against the earlier product due to its “quick technical failure and limited market impact” particularly compared to the later product that was the subject to the infringement suit. Id. at 10. Following the launch of Bard’s product in 2003, Gore explained that the five to six years delay were justified because Gore was focused on other legal issues. For instance, Gore’s business leader for its medical products division stated in his deposition that Gore was “fairly consumed” with this litigation and other litigation against another defendant, which drew Gore resources that might otherwise have been used on “offensive” patent litigation. Id. at 10-12. Furthermore, Judge Burke found that there was at least a question of fact as to whether Bard should have reasonably anticipated being sued by Gore at some point. Id. at 12-14. Judge Burke cited to case law deeming both of these excuses sufficient to overcome a presumption of laches and held that there were questions of fact that should be resolved by a jury.
Update (7/27/16): Chief Judge Leonard P. Stark adopted Magistrate Judge Burke’s Report and Recommendation in full, reviewing the motion de novo and overruling Bard’s objections. W.L. Gore & Associates, Inc. v. C.R. Bard, Inc., et al., C.A. No. 11-515-LPS (D. Del. July 27, 2016).
The Court rejected Bard’s argument in its objections that Gore had presented insufficient evidence to show genuine issues of material fact as to whether its delay in bringing suit was reasonable and excusable, as “only a ‘minimum quantum of evidence’ is required to rebut the presumption [of laches]” and such a showing had been made. Id. at 2-3. The Court’s analysis of Bard’s objections focused on the impact of Gore’s other litigations on the laches question. The Court disagreed that there was a strict notice requirement for future litigation, see id. at 3, instead weighing “all pertinent factors” to conclude that “a factfinder might reasonably find that Bard did have reason to believe it was likely to be sued when Gore’s other litigation ended.” Id. at 3. The Court also concluded that Gore was not required at this stage to show its involvement in other litigations was “actually the reason” for delay in bringing suit. Instead, it was enough to show that this involvement, combined with other factors, created an inference that the delay was excusable. Id. at 4. Finally, the Court refused to enter an order pursuant to FRCP 56(g) stating that facts necessary to establish a presumption of laches would be treated as established in the case, holding that it would be improper to do so at the summary judgment stage. Id. at 4.