pursue negotiations to a successful conclusion. In fact,
plaintiff's inquiries to defendants regarding licensing
constituted no more than offers to negotiate on the part of the
plaintiff, an offer defendants refused.
Defendants have sustained their burden of showing plaintiff's
delay was unreasonable and resulted in prejudice. Plaintiff's
claim that his delay was due to his inability to retain a law
firm is a "sufficient [showing] of unreasonability of delay [by
plaintiff] and prejudice [to defendant]." Standard Oil Co. v.
Rohm and Haas Co., 589 F. Supp. 264, 265 (S.D.Tex. 1984), aff'd,
754 F.2d 345 (Fed.Cir. 1985).
Moreover, plaintiff's delay has caused defendants extreme
prejudice. From the early 1980s, when plaintiff first became
aware of defendants' allegedly infringing patents, until 1988,
when plaintiff finally brought suit, defendants had developed
many more shoes incorporating the allegedly infringing design.
In addition, a number of key witnesses, including designers and
managers, are no longer in defendants' employ or available.
See Meyers v. Brooks Shoe, Inc. (citing Lemelson v. Carolina
Enterprises, Inc., 541 F. Supp. 645, 656-58 (S.D.N.Y. 1982);
Advanced Hydraulics, Inc. v. Eaton Corp., 415 F. Supp. 283,
284-85 (N.D.Ill. 1976); Lukens Steel Co. v. American Locomotive
Co., 197 F.2d 939 (2d Cir. 1952)). Given defendants' prejudice,
plaintiff is barred from recovering damages under the doctrine
Turning to the issue of equitable estoppel, this doctrine
requires that defendants prove the two elements of laches plus
"affirmative conduct" inducing detrimental reliance.
Jamesbury Corp. v. Litton Industrial Products, Inc.;
Studiengesellschaft Kohle, m.b.H. v. Dart Industries, Inc.
726 F.2d 724 (Fed.Cir. 1984). Defendants already have satisfied
their burden with respect to laches. Furthermore, as in Brooks,
I find that plaintiff's sudden prolonged silence of several
years after his initial aggressive advocacy of his purported
claims was so misleading as to amount to bad faith. Plaintiff
had no contact whatsoever with Hyde from 1983 until 1988, with
ATC from 1985 until 1988, and with Asics at any time. Such
silence could only convey the impression that plaintiff
knowingly had abandoned any alleged claims. Defendants
therefore properly relied on this impression while undertaking
the extensive development and marketing plaintiff now seeks to
Finally, I again reject plaintiff's contentions that he could
not bring suit until the third patent issued in 1986, and that
the 1986 patent triggers a new time period for the laches
analysis.*fn7 This action is based primarily on the design
embodied in the first patent. As early as his first accusations
of infringement, Meyers has referred to his three patents
collectively, and he has acknowledged that they are
interrelated. Considering the admitted interrelationship of the
patents, plaintiff could and should have brought suit on the
first patent immediately after suspecting infringement thereon;
had he done so, he easily could have amended his complaint to
include the other patents as they issued. However, having taken
one position through his conduct for purposes of enforcing his
rights, plaintiff is equitably estopped from now changing that
position in an unsuccessful attempt to resuscitate this
lawsuit. See, e.g., Baron v. Lombard, 71 A.D.2d 823, 419
N YS.2d 388 (1979), aff'd, 50 N.Y.2d 896, 430 N.Y.S.2d 591,
408 N.E.2d 920 (1980); Ryder Truck Rental, Inc. v. Williamstown
W. & C. Co., 62 Misc.2d 848, 309 N.Y.S.2d 508 (1970).
Defendants Hyde, Asics and ATC having demonstrated that
plaintiff's claims against them are barred by the doctrines of
laches and equitable estoppel, their motions are granted and
this action is dismissed as to them.