Serdarevic v. Advanced Medical Optics, Inc.

United States Court of Appeals for the Federal Circuit

2008-1075

OLIVIA N. SERDAREVIC, M.D.,

Plaintiff-Appellant,

v.

ADVANCED MEDICAL OPTICS, INC.,
STEPHEN L. TROKEL, M.D., and VISX, INC.,

Defendants-Appellees,

and

FRANCIS A. L’ESPERANCE, JR., M.D.,

Defendant-Appellee.

Ira S. Sacks, Dreier LLP, of New York, New York, argued for plaintiff-appellant.
Of counsel was Gerard F. Diebner.

Roger J. Chin, Wilson Sonsini Goodrich & Rosati, of Palo Alto, California, argued
for defendants-appellees Advanced Medical Optics, Inc., et al. With him on the brief
was Ron E. Shulman.

Steven Mancinelli, Codispoti & Mancinelli, LLP, of New York, New York, argued
for defendant-appellee Francis A. L’Esperance, Jr., M.D.

Appealed from: United States District Court for the Southern District of New York

Judge Denise L. Cote
 United States Court of Appeals for the Federal Circuit
2008-1075

OLIVIA N. SERDAREVIC, M.D.,

Plaintiff-Appellant,

v.

ADVANCED MEDICAL OPTICS, INC.,
STEPHEN L. TROKEL, M.D., and VISX, INC.,

Defendants-Appellees,

and

FRANCIS A. L’ESPERANCE, JR., M.D.,

Defendant-Appellee.

Appeal from the United States District Court for the Southern District of New York in
case no. 06-CV-7107, Judge Denise L. Cote.

__________________________

DECIDED: July 16, 2008
__________________________

Before MICHEL, Chief Judge, LINN, Circuit Judge, and ZAGEL, District Judge. *

LINN, Circuit Judge.

In this case, we are called upon to resolve several issues relating to a claim by

Olivia N. Serdarevic (“Serdarevic”) that she is the inventor or co-inventor of technology

related to laser vision correction disclosed in six United States patents issued between

1987 and 1998. Serdarevic brought suit on September 15, 2006, against the current

owner of the patents, its corporate parent, and the named inventors, seeking correction

*
Honorable James B. Zagel, District Judge, United States District Court for
the Northern District of Illinois, sitting by designation.
of inventorship and alleging state-law claims of unjust enrichment and fraud against the

named inventors. The district court granted the defendants’ motions for summary

judgment on the basis of laches and the applicable state statutes of limitations.

Serdarevic v. Advanced Med. Optics, Inc., 06-CV-7107, slip op. at 3, 27 (S.D.N.Y. Sept.

25, 2007).

We conclude that the district court did not abuse its discretion by holding that

Serdarevic’s inventorship claim was barred by laches. We likewise conclude that the

district court correctly determined that Serdarevic’s state-law claims were barred by the

applicable statutes of limitations. Finally, we conclude that the district court did not

abuse its discretion by denying Serdarevic’s motion for discovery under Federal Rule of

Civil Procedure 56(f) on either her laches claim or her state-law claims. We therefore

affirm.

I. BACKGROUND

Serdarevic is a physician who did her residency in the early 1980s at the Edward

S. Harkness Eye Institute at Columbia Presbyterian Medical Center (“Harkness”). At

the time of her residency, defendants Francis A. L’Esperance, Jr. (“L’Esperance”) and

Stephen L. Trokel (“Trokel”) were ophthalmologists and attending physicians at

Harkness.

Serdarevic claims that during her residency she invented the technology claimed

in six patents: U.S. Patent No. 4,665,913; U.S. Patent No. 5,108,388 (“the ’388

patent”); U.S. Patent No. 5,188,631; U.S. Patent No. 5,207,668; U.S. Patent No.

5,711,762; and U.S. Patent No. 5,735,843 (collectively, the “patents-in-suit”).

L’Esperance is the sole inventor named on three of the patents, and Trokel is the sole

inventor named on the other three. All six patents-in-suit have been assigned to

2008-1075 2
defendant VISX, Inc. (“VISX”), which is a wholly owned subsidiary of defendant

Advanced Medical Optics, Inc. (“AMO”). Serdarevic claimed to be the sole inventor of

the subject matter claimed in the ’388 patent, and a co-inventor of the subject matter

claimed in the other five.

In a declaration in opposition to defendants’ motion for summary judgment,

Serdarevic described her inventorship claims in detail. She claimed to have conceived

of her invention between September 1979 and September 1983. During part of that

time, Serdarevic participated in a clinical clerkship in Paris with Professor Marcel

Massin (“Massin”), whom Serdarevic characterized as a prominent retinal laser

specialist. Serdarevic discussed her research findings with Massin and engaged in

what she characterized as a long-term continuing interaction with him from 1979

through 1982, including repeated discussion of the concepts that formed her invention.

Serdarevic also described discussions that she had in 1980 with David Maurice, Ph.D.

(“Maurice”), whom she characterized as a world-renowned researcher on corneal

structure and wound healing. Finally, Serdarevic described her discussions in 1980

with Professor Richard Berson (“Berson”), a physical chemist at Columbia whose work

had provided further evidence to Serdarevic that her invention would be suitable for use

in corneal surgery. Massin, Maurice, and Berson all died between 2002 and 2003.

Serdarevic learned of the patents-in-suit in October 1998. Through an attorney,

Serdarevic contacted VISX in 1999, claiming to be an inventor of the patents-in-suit and

requesting a share of past and future royalties derived from the patents. In September

1999, VISX’s counsel requested that Serdarevic provide documentation corroborating

her inventorship claims, and Serdarevic’s counsel agreed to do so. But Serdarevic did

2008-1075 3
not contact VISX again until after she filed her complaint in this action in September

2006. 1

One of the patents-in-suit—the ’388 patent—was the subject of reexamination

proceedings initiated in January 1998. During her discussions with VISX in 1999,

Serdarevic offered to support VISX’s position during reexamination, indicating that

Serdarevic was aware of the pending proceedings. The reexamination proceedings

concluded in 2000, and a reexamination certificate issued on September 19, 2000.

Serdarevic filed her complaint in this action on September 15, 2006. On March

23, 2007, shortly after Serdarevic filed her second amended complaint, the defendants

moved for summary judgment, or, in the alternative, to dismiss. In response, Serdarevic

cross-moved for discovery pursuant to Rule 56(f), seeking discovery on two issues:

“whether VISX and AMO would have made the same investments in the patents-in-suit

despite her delay in filing suit, and whether the individual defendants received payments

of any kind within the past seven years.” Id. at 21.

The district court granted the defendants’ motions for summary judgment and

denied Serdarevic’s cross motion for discovery. Id. at 3, 27. Specifically, the district

court held that Serdarevic’s inventorship claim was barred by laches and that her state-

law claims were barred by the applicable statutes of limitations. Id. at 3, 23, 27.

Serdarevic timely appealed. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

1
Serdarevic also claims that she had contact with the CEO of AMO about
her patent rights in the area of laser vision correction in 2002. AMO did not acquire
VISX until May 2005. Thus, at the time of Serdarevic’s alleged contact with the CEO of
AMO, AMO had no ownership interest in the patents-in-suit.

2008-1075 4
 II. DISCUSSION

A. Laches

Laches is an equitable defense that may bar an inventorship claim. See Lane &

Bodley v. Locke, 150 U.S. 193, 201 (1893) “The application of the defense of laches is

committed to the sound discretion of the district court.” A.C. Aukerman Co. v. R.L.

Chaides Constr. Co., 960 F.2d 1020, 1032 (Fed. Cir. 1992) (en banc). Thus, “[o]n

appeal the standard of review of the conclusion of laches is abuse of discretion. An

appellate court, however, may set aside a discretionary decision if the decision rests on

an erroneous interpretation of the law or on clearly erroneous factual underpinnings. If

such error is absent, the determination can be overturned only if the trial court’s

decision represents an unreasonable judgment in weighing relevant factors.” Id. at

1039. Because the district court in this case decided laches on summary judgment,

“there must, in addition, be no genuine issues of material fact, the burden of proof of an

issue must be correctly allocated, and all pertinent factors must be considered.” Id.

Serdarevic challenges the district court’s laches determination on three grounds:

(1) that the district court improperly relied on the presumption of laches; (2) that she

presented sufficient evidence to rebut the presumption; and (3) that the defendants’

unclean hands precluded them from relying on the laches defense. We address each in

turn.

1. Presumption of Laches

“[A] delay of more than six years after the omitted inventor knew or should have

known of the issuance of the patent will produce a rebuttable presumption of laches.”

Advanced Cardiovascular Sys., Inc. v. Scimed Life Sys., Inc., 988 F.2d 1157, 1163

(Fed. Cir. 1993). Serdarevic admits knowing of the issuance of the patents-in-suit in

2008-1075 5
October 1998. She did not file suit until September 15, 2006—nearly eight years later.

Thus, as the district court correctly concluded, the presumption of laches applies.

Serdarevic argues that the presumption of laches should not apply as to her

inventorship claim for the ’388 patent, because the reexamination certificate for the ’388

patent did not issue until September 19, 2000, and she brought suit just less than six

years later, on September 15, 2006. Citing this court’s decision in Vaupel

Textilimaschinen KG v. Meccanica Euro Italia S.P.A., 944 F.2d 870 (Fed. Cir. 1991),

Serdarevic claims that “this Court has noted that the operative date for laches purposes

is the date the reissue proceedings concluded, not when the party learned of the prior

issuance.” Appellant’s Br. at 26 (citing Vaupel, 944 F.2d at 876-79). Thus, Serdarevic

argues, under Vaupel, the issuance of a reexamination certificate resets the six-year

clock for the presumption of laches.

Vaupel does not stand for this broad proposition. Vaupel was an infringement

case, not an inventorship case. See 944 F.2d at 871. In Vaupel, the patentee learned

of the infringing activity while the patent-in-suit was the subject of reissue proceedings

before the PTO. Id. The accused infringer received notice of the reissue proceedings

and participated in them. Id. The reissue proceedings concluded five years later, and

the patentee brought its infringement action three years thereafter—a total of eight

years after learning of the infringement. Id. at 876.

We held in Vaupel that the patentee’s delay in bringing its infringement action

was excusable because the patent owner was engaged in “other litigation”—namely, the

reissue proceedings. Id. at 877. Because the infringer knew of and participated in the

reissue proceedings, and because the patentee had made clear to the infringer that it

2008-1075 6
would bring an infringement action after the reissue proceedings concluded, the

patentee’s delay was excusable. Id. at 878 (“Where there is explicit notice of a reissue

proceeding in which an alleged infringer actively participated, and the evidence as a

whole shows that the accused infringer was in fear of suit, there is no further

requirement to notify the alleged infringer of an intent to sue after the reissue

proceeding has been concluded in order to avoid a holding of laches.”). “What is

important is whether [the defendant] had reason to believe it was likely to be sued” after

the reissue proceedings concluded. Id.

In this case, the “other litigation” excuse applied in Vaupel is inapplicable. It was

the defendants—not Serdarevic—that were engaged in reexamination proceedings

before the PTO. Serdarevic was not engaged in any “other litigation” that would have

excused her delay in bringing her ownership claim. Moreover, Serdarevic has offered

no evidence suggesting that the defendants had reason to believe that they were likely

to be sued once the reexamination proceedings were complete. See id.

Finally, Serdarevic has not identified any way in which the reexamination

proceeding changed her inventorship claim. While she is correct that the claims of the

’388 patent “could have been amended to limit or otherwise affect her claim of

inventorship,” Appellant’s Reply Br. at 14, that mere possibility does not excuse her

from asserting her claim. One thing is clear, and accordingly we so hold: there is no

rule that the issuance of a reexamination certificate automatically resets the six-year

clock for the presumption of laches in each and every case.

Here, there is nothing in the record to suggest that Serdarevic’s inventorship

claim arose during the reexamination proceedings or changed in any material way over

2008-1075 7
the course thereof. To the contrary, Serdarevic claimed to be the sole inventor of all of

the claims of the ’388 patent—both the claims that existed prior to reexamination, and

those that were added during reexamination. The district court was correct to conclude

that the presumption of laches applied.

Serdarevic also argues that a defendant cannot rely on the presumption alone,

but must present affirmative evidence of prejudice. This is wrong as a matter of law.

Once the presumption of laches has attached, “the defendants could have remained

utterly mute on the issue of prejudice and nonetheless prevailed.” Hall v. Aqua Queen

Mfg., Inc., 93 F.3d 1548, 1554 (Fed. Cir. 1996). The district court therefore committed

no error by holding that the presumption alone—if not rebutted—entitled the defendants

to summary judgment.

2. Rebuttal of Laches Presumption

A patentee can rebut the presumption of laches “by offering evidence to show an

excuse for the delay or that the delay was reasonable” or by offering evidence “sufficient

to place the matters of [evidentiary] prejudice and economic prejudice genuinely in

issue.” Aukerman, 960 F.2d at 1038; see also Intirtool, Ltd. v. Texar Corp., 369 F.3d

1289, 1297 (Fed. Cir. 2004) (“The laches defense has two underlying elements: first,

the [plaintiff’s] delay in bringing suit must be ‘unreasonable and inexcusable,’ and

second, the [defendant] must have suffered ‘material prejudice attributable to the

delay.’” (quoting Aukerman, 960 F.2d at 1028)). The district court held that Serdarevic

had not met her burden of production on either reasonable delay or prejudice.

Serdarevic argues that her eight-year delay in bringing suit was reasonable or

excusable because of her unfamiliarity with the U.S. patent system, her inability to

obtain legal counsel, and her efforts to license her inventorship rights. The district court

2008-1075 8
considered these excuses, but found them insufficient to rebut the presumption that her

delay was unreasonable. Serdarevic, slip op. at 18. We agree. While Serdarevic

herself may have been unfamiliar with the U.S. patent system, she was represented by

patent counsel in 1999. Her personal lack of familiarity with the patent system therefore

does not excuse her failure to file suit. Nor can her later inability to find counsel willing

to pursue her claims on a contingency basis excuse her delay. “A patentee’s inability to

find willing counsel . . . is widely rejected as a legally cognizable reason to excuse an

unreasonable delay in filing suit.” Hall, 93 F.3d at 1554. Finally, Serdarevic does not

explain—and we do not understand—why her ongoing efforts to license her

inventorship rights would prevent her from bringing suit to correct inventorship. If

anything, her interest in licensing her claimed invention should have provided a strong

incentive for her to correct inventorship as soon as possible. Even taken together,

Serdarevic’s excuses are insufficient to rebut the presumption that her eight-year delay

was unreasonable. There is no basis for us to conclude that the district court abused its

discretion when it concluded that Serdarevic’s delay was unreasonable.

Nor did the district court abuse its discretion when it concluded that Serdarevic

failed to rebut the presumption of prejudice:

Material prejudice . . . may be either economic or evidentiary. Evidentiary,
or ‘defense’ prejudice, may arise by reason of a defendant’s inability to
present a full and fair defense on the merits due to the loss of records, the
death of a witness, or the unreliability of memories of long past events,
thereby undermining the court’s ability to judge the facts. . . . Economic
prejudice may arise where a defendant and possibly others will suffer the
loss of monetary investments or incur damages which likely would have
been prevented by earlier suit.”

Aukerman, 960 F.2d at 1033 (citations omitted). The district court held that Serdarevic

had failed to meet her burden to rebut the presumption of evidentiary prejudice,

2008-1075 9
because three witnesses with knowledge of Serdarevic’s inventorship claim—Massin,

Maurice, and Berson—all died during the period of her delay, and because of the

“cumulative and inherent prejudice from the dimming memories of all participants,

including Serdarevic herself.” Serdarevic, slip op. at 18. Because it concluded that

Serdarevic had failed to meet her burden of production on evidentiary prejudice, the

district court did not reach the issue of economic prejudice.

Serdarevic argues that the district court erred in finding evidentiary prejudice,

because the three deceased witnesses were not material. Specifically, she claims that

the witnesses would only confirm her inventorship claim, that both parties had sufficient

documentary evidence to decide the issue of inventorship without their testimony, and

that she was willing to forego any reliance on the deceased witnesses. Serdarevic’s

claim that the witnesses are unimportant is belied by her discussion of interactions with

each of the witnesses in the portion of her declaration describing the conception of her

invention. As the district court concluded, the witnesses “were each important enough

to the historical record for Serdarevic to describe her work with them in the declaration

she submitted in opposition” to defendants’ motion for summary judgment. Id.

Moreover, Serdarevic’s willingness to forego reliance on the witnesses does not undo

the prejudice to the defendants. There are no declarations by the witnesses in the

record, and the defendants have had no opportunity to question them. Thus, as the

district court concluded, “their deaths prevent the defendants from fully investigating

Serdarevic’s claims.” Id. We therefore conclude that the district court did not abuse its

discretion by finding that Serdarevic had failed to rebut the presumption of evidentiary

prejudice.

2008-1075 10
 3. Unclean Hands

Under the unclean hands doctrine, “[e]ven if unable to overcome the

presumption, a [plaintiff] may be able to preclude application of the laches defense with

proof that the [defendant] was itself guilty of misdeeds towards the [plaintiff].”

Aukerman, 960 F.2d 1038. To succeed in an unclean hands claim, a plaintiff is required

to show that the defendant has “engaged in particularly egregious conduct which would

change the equities significantly in plaintiff’s favor.” See id. at 1033 (citing Bott v. Four

Star Corp., 807 F.2d 1567, 1576 (Fed. Cir. 1986)). But it is not enough merely to show

misconduct. See Yeda Research & Dev. Co. v. ImClone Sys. Inc., 443 F. Supp. 2d

570, 629-30 (S.D.N.Y. 2006) (“Because we find that defendants’ hands are unclean,

i.e., they are responsible for plaintiff not finding out about their patent applications, the

laches defense is unavailable to defendants.”); see also Potash Co. of Am. v. Int’l

Minerals & Chem. Corp., 213 F.2d 153, 155 (10th Cir. 1954) (“If the party which

advances the defense of laches is responsible for the delay or contributes substantially

to it he cannot take advantage of it.”); Bound v. Spencer Gifts, Inc., No. Civ. A. 95-2216,

1996 WL 556657, at *4 (E.D. Pa. Oct. 1, 1996) (“The doctrine of ‘unclean hands’ applies

to cases of an exceptional character, such as where a defendant was responsible for

plaintiff’s delay or affirmatively allayed the plaintiff’s suspicions through deception.”).

Thus, we hold that in the context of an inventorship action, a plaintiff relying on the

unclean hands doctrine to defeat a defense of laches must show not only that the

defendant engaged in misconduct, but moreover that the defendant’s misconduct was

responsible for the plaintiff’s delay in bringing suit.

In this case, Serdarevic has not expressly identified the conduct by the

defendants that she claims gives rise to her unclean hands defense. See Appellant’s

2008-1075 11
Reply Br. at 28 (arguing only that “Serdarevic provided an ample record of the

Defendants’ unclean hands.”). It appears from Serdarevic’s citations to the record that

she claims that the defendants’ “particularly egregious conduct” was the omission of

Serdarevic as a co-inventor of the patents-in-suit and the concealment of the patent

applications from Serdarevic. See Appellant’s Br. at 43. However, Serdarevic has not

identified any way in which the alleged misconduct of the defendants was responsible

for her delay in bringing her claim after she learned of the patents-in-suit in 1998.

Moreover, the misconduct on which Serdarevic appears to base her unclean hands

claim is the very same conduct that forms the basis for her inventorship claims—

namely, the defendants’ failure to name her as an inventor of the patents-in-suit. If the

failure to name an inventor were sufficiently “egregious conduct” to give rise to an

unclean hands claim, then laches would never be available as a defense to an

inventorship claim. Because the defendants’ alleged misconduct was not responsible

for Serdarevic’s delay, the district court was correct to conclude that the defendants’

laches defense was not precluded by unclean hands.

B. State-Law Claims

“This court reviews the district court’s grant or denial of summary judgment under

the law of the regional circuit.” MicroStrategy, Inc. v. Bus. Objects, S.A., 429 F.3d 1344,

1349 (Fed. Cir. 2005). Under applicable Second Circuit law, “[w]e review de novo the

district court’s determination that plaintiff’s claims are barred by the statute of

limitations.” Kronisch v. United States, 150 F.3d 112, 120 (2d Cir. 1998).

1. Unjust Enrichment

The statute of limitations in New York for unjust enrichment is six years.

Lawyers’ Fund for Client Prot. v. Gateway State Bank, 658 N.Y.S.2d 705, 827 (N.Y.

2008-1075 12
App. Div. 1997); see also N.Y. C.P.L.R. 213(1) (McKinney 2003) (applying six-year

statute of limitations to actions “for which no limitation is specifically prescribed by law”).

“The statute of limitations for a claim of unjust enrichment begins to run ‘upon the

occurrence of the wrongful act giving rise to a duty of restitution.’” Golden Pac. Bancorp

v. Fed. Deposit Ins. Comm’n, 273 F.3d 509, 520 (2d Cir. 2001) (quoting Congregation

Yetev Lev D’Satmar, Inc. v. 26 Adar N.B. Corp., 596 N.Y.S.2d 435, 437 (N.Y. App. Div.

1993)).

There is no evidence in the record that either Trokel or L’Esperance—against

whom Serdarevic asserted her unjust enrichment claim—received any remuneration

from the patents-in-suit within the six-year limitations period. To the contrary, the district

court found—and Serdarevic does not dispute—that Trokel and L’Esperance fully

assigned their rights to the patents-in-suit more than six years before Serdarevic filed

her complaint. Serdarevic, slip op. at 18. Trokel and L’Esperance each also submitted

a declaration claiming, “Within the past seven years, I have not received any payment,

stock, or other compensation in exchange for any rights under the [patents-in-suit].”

Decl. of Def. Stephen L. Trokel, M.D., Mar. 21, 2007, at 2; Decl. of Def. Francis A.

L’Esperance, Jr., M.D., Mar. 21, 2007, at 2. These declarations, coupled with the

undisputed documentary record of the assignment of the patents-in-suit, are more than

sufficient to warrant summary judgment in favor of Trokel and L’Esperance on statute-

of-limitations grounds.

2. Fraud

The New York statute of limitations for actual fraud is the longer of six years from

the date on which the fraud occurred, or two years from the time when the plaintiff

discovered or, with reasonable diligence, should have discovered the fraud. N.Y.

2008-1075 13
C.P.L.R. 213(8); County of Ulster v. Highland Fire Dist., 815 N.Y.S.2d 303, 306 (N.Y.

App. Div. 2006).

Serdarevic asserted a fraud claim against Trokel, claiming that he concealed

facts from her and misrepresented facts to her, to prevent her from taking actions that

would have resulted in her being listed as an inventor of the patents-in-suit. Her only

specific allegation in her fraud claim is that Trokel “had an opportunity and/or an

obligation to disclose to Dr. Serdarevic the existence of patent filings directed to Dr.

Serdarevic’s inventions when he was controlling Dr. Serdarevic’s access to [the]

experimental apparatus essential to furtherance of the research that led to her

conception and reduction to practice of the inventions of [three of the patents-in-suit], as

well as influencing Dr. Serdarevic’s opportunities to publish the fruits of her research

. . . .” Second Am. Compl. ¶ 217; see also Serdarevic, slip op. at 24 (concluding that

Serdarevic’s “most specific allegation” of fraud “relates to the early 1980s and is that

Trokel had an opportunity or obligation to disclose the existence of his patent filings”).

Serdarevic was aware of the patents-in-suit by October 1998. Thus, even if

Trokel had successfully concealed the patents-in-suit from Serdarevic from the 1980s

until 1998, Serdarevic necessarily discovered or, with reasonable diligence, should have

discovered that concealment when she learned of the patents-in-suit in 1998. The six-

year limitations period for her actual and constructive fraud claims thus began to run in

1998. Her action was filed in 2006, well past the six-year limitations period. It is

therefore barred by the statute of limitations.

On appeal, Serdarevic argues that the limitations period should have been tolled

under the doctrine of equitable tolling. “Since the nature of a fraud or subsequent

2008-1075 14
actions taken by the defendant to conceal the fraud may have made it impossible for a

plaintiff to discover the facts underlying his cause of action until after the limitations

period had expired, the courts fashioned the doctrine of equitable tolling to relieve the

plaintiff of the rigor of the statutory bar.” Cerbone v. Int’l Ladies’ Garment Workers’

Union, 768 F.2d 45, 48 (2d Cir. 1985). “The essence of the doctrine [of equitable tolling]

‘is that a statute of limitations does not run against a plaintiff who is unaware of his

cause of action.’” Id. (quoting Long v. Abbott Mortgage Corp., 459 F. Supp. 108, 113

(D. Conn. 1978)). Serdarevic has not explained how anything that Trokel did after she

learned of the patents-in-suit in 1998 “made it impossible for [Serdarevic] to discover the

facts underlying [her] cause of action.” The doctrine of equitable tolling is therefore

inapplicable here.

C. Serdarevic’s Rule 56(f) Motion

Serdarevic argues that the district court erred by denying her Rule 56(f) cross-

motion for discovery, made in response to defendants’ motions for summary judgment.

At the time of Serdarevic’s motion, 2 Rule 56(f) provided:

Should it appear from the affidavits of a party opposing the motion [for
summary judgment] that the party cannot for reasons stated present by
affidavit facts essential to justify the party’s opposition, the court may
refuse the application for judgment or may order a continuance to permit
affidavits to be obtained or depositions to be taken or discovery to be had
or may make such other order as is just.

“We look to regional circuit ‘procedural law for precedential guidance concerning

practice under Rule 56(f).’” Q-Pharma, Inc. v. Andrew Jergens Co., 360 F.3d 1295,

1300 (Fed. Cir. 2004) (quoting Biotec Biologische Naturverpackungen GmbH v.

2
Rule 56 was amended effective December 1, 2007, as part of the general
restyling of the Civil Rules. The changes to Rule 56 were intended to be stylistic only.
See Fed. R. Civ. P. 56 advisory committee’s note (2007). Our analysis would be the
same under the current version of the rule.

2008-1075 15
Biocorp, Inc., 249 F.3d 1341, 1355 n.4 (Fed. Cir. 2001)). In the Second Circuit, the

denial of a Rule 56(f) motion for discovery in response to a motion for summary

judgment is reviewed for abuse of discretion. Gualandi v. Adams, 385 F.3d 236, 244-45

(2d Cir. 2004).

The Second Circuit places a significant burden on a party seeking to avoid

summary judgment by requesting discovery under Rule 56(f):

[I]t is clear that a plaintiff cannot defeat a motion for summary judgment by
merely restating the conclusory allegations contained in his complaint, and
amplifying them only with speculation about what discovery might
uncover. “An opposing party’s mere hope that further evidence may
develop prior to trial is an insufficient basis upon which to justify the denial
of the motion.”

Contemporary Mission, Inc. v. U.S. Postal Serv., 648 F.2d 97, 107 (2d Cir. 1981)

(citations omitted) (quoting Neely v. St. Paul Fire & Marine Ins. Co., 584 F.2d 341, 344

(9th Cir. 1978)); see also id. at 107 n.14 (“An ‘opposing party’s facts must be material

and of a substantial nature, not fanciful, frivolous, gauzy, spurious, irrelevant, gossamer

inferences, conjectural, speculative, nor merely suspicions.’” (quoting 6 J. Moore,

Federal Practice ¶ 56.16[3] at 56-486 to 56-487 (2d ed. 1976))).

On the issue of laches, Serdarevic requested that the district court permit

discovery on whether the defendants would have made the same investments in the

patents-in-suit even if Serdarevic had asserted her claims earlier. On appeal,

Serdarevic claims that she was entitled to discovery on: (1) economic prejudice; (2)

evidentiary prejudice “based upon destruction or unavailability of records”; (3)

defendants’ knowledge of her intent to pursue her claims; and (4) defendants’ unclean

hands. Appellant’s Br. at 40-41. As the district court reasoned, discovery on the issue

of economic prejudice was unnecessary, because the court found evidentiary prejudice

2008-1075 16
and therefore did not have to reach the issue of economic prejudice. Serdarevic, slip

op. at 21. Likewise, discovery was not necessary on evidentiary prejudice based on

“destruction or unavailability of records,” because that was not the basis for the district

court’s rulings on evidentiary prejudice grounds. As to Serdarevic’s requests for

discovery on defendants’ knowledge of her claims and unclean hands, Serdarevic has

identified no basis—beyond “the conclusory allegations contained in [her] complaint”—

on which to find that discovery would lend support to her claims. We therefore conclude

that the district court did not abuse its discretion by denying Serdarevic’s Rule 56(f)

motion for discovery on laches.

Finally, we likewise conclude that the district court did not abuse its discretion by

denying Serdarevic’s Rule 56(f) motion for discovery on her unjust enrichment claim.

Serdarevic speculates that, if she had been permitted to depose Trokel and

L’Esperance, she might learn that they in fact had received some benefit from the

patents-in-suit within the limitations period. For example, Serdarevic conjectures that

“[i]f Trokel received stock in VISX in exchange for his rights in the patents-in-suit prior to

2000, and then had that stock cashed out when AMO bought VISX in May 2005 . . . ,

that surely . . . is a benefit received within the limitations period . . . .” Appellant’s Reply

Br. at 30. But Serdarevic’s “mere hope that further evidence may develop” suggesting

that Trokel and Serdarevic had—contrary to their declarations—received some

undisclosed benefit from the patents-in-suit is not a sufficient basis to overturn the

district court’s decision to deny discovery under the deferential abuse of discretion

standard. See Contemporary Mission, 648 F.2d at 107; Neely, 584 F.2d at 344.

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 III. CONCLUSION

For the foregoing reasons, we affirm the judgment of the district court granting

the defendants’ summary judgment motions and denying Serdarevic’s cross-motion for

discovery.

AFFIRMED

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