Integrated Cards, L.L.C. v. McKillip Industries, Inc., No. 06 C 2071, 2008 WL 3286981 (N.D. Ill. Aug. 8, 2008) (Kendall, J.).

Judge Kendall denied defendant’s motion for summary judgment of laches and equitable estoppel, and set a bench trial on the two defenses. Plaintiff charged defendant with infringing its patent covering a card (such as an ID card) integrated with a letter – Illinois attorneys get their ARDC cards in a similar form.

Defendant made and sold versions of the accused product for at least nine to ten years. Defendants argued that plaintiffs had actual constructive knowledge of the accused product beginning in 1998 or 1999, longer than the six years before the filing date required for a presumption of laches pursuant to 35 U.S.C. § 282. That presumption would have shifted the burden of proof from defendants to plaintiffs.

Defendants alleged plaintiffs’ knowledge was based upon various conversations, working relationships and trade show attendance. But the Court held that plaintiffs raised material questions of fact as to each communication or trade show. The Court did, however, note that it had doubts about some of plaintiffs’ testimony explaining their lack of knowledge from trade shows. But on summary judgment, the Court would not make credibility determinations against plaintiffs, the non-moving party.

Because the Court did not grant summary judgment as to the presumption of laches, defendants retained the burden of proof. And the Court held that because of defendants’ burden and because the parties disputed whether defendants were prejudiced by plaintiffs’ alleged delay in filing suit, summary judgment was not appropriate.

The Court also denied summary judgment of equitable estoppel, relying upon its laches reasoning. And the Court set a bench trial on laches and inequitable conduct to be held before the liability trial.