• Doctrine of Prosecution Laches Renders Lemelson Bar Code Patents Unenforceable
  • October 11, 2005
  • Law Firm: Duane Morris LLP - Philadelphia Office
  • Symbol Technologies, Inc. v. Lemelson Medical, Education & Research Foundation, L.P., No. 04-1451

    In a September 9, 2005 opinion the Federal Circuit revisited its 2002 decision from the same case in which the Court established the legal viability of the doctrine of prosecution laches to continuation and continuation-in-part applications. In this recent Federal Circuit decision, a three-judge panel unanimously affirmed a declaratory judgment of the U.S. District Court for the District of Nevada that the 14 patents asserted by defendant Lemelson Medical, Education & Research Foundation, L.P. ("Lemelson") were unenforceable under the doctrine of prosecution laches.

    Symbol Technologies, Inc. ("Symbol"), a manufacturer of bar code scanners and related machine vision products, initiated the declaratory judgment action after Lemelson began sending letters to Symbol's customers stating that the use of Symbol's products infringed various patents held by Lemelson, the assignee of approximately 185 unexpired patents and a number of pending applications of the late Jerome H. Lemelson. Lemelson argued that the 14 patents-in-suit, which related to machine vision and automatic identification bar code technology, were entitled to priority from two patent applications filed in 1954 and 1956, as the patents-in-suit were based on a series of continuation and continuation-in-part applications spanning back to these two patent applications from the 1950s.

    During earlier proceedings in the same case, Lemelson argued there was no case or controversy between the parties and that the doctrine of prosecution laches was limited to claims arising out of interference proceedings. The District Court concluded that there was a case or controversy, but dismissed the prosecution laches defense based on Lemelson's arguments. In an interlocutory appeal, however, the Federal Circuit held that prosecution laches was a viable defense and, consequently, reversed the judgment and remanded the matter to the District Court for further proceedings to develop the relevant facts. Symbol Techs., Inc. v. Lemelson Med., Educ. & Research Found., 272 F.3d 1361 (Fed. Cir. 2002).

    Following a bench trial and post-trial briefing, Judge Phillip M. Pro of the U.S. District Court for Nevada concluded in January 2004 that Lemelson's patents were unenforceable due to prosecution laches upon finding "strong evidence . . . of intervening private and public rights" and determining that Lemelson's 18- to 39-year delay in filing and prosecuting the asserted claims was "unreasonable and unjustified." In affirming the District Court's judgment of unenforceability due to prosecution laches, the Federal Circuit first noted that there were no firm guidelines for determining when prosecution laches exists and left that determination to the discretion of the district court as a matter of equity, reviewable on appeal only for abuse of discretion.

    Stating that the doctrine should be used "sparingly" and "only in egregious cases of misuse of the statutory patent system," the Federal Circuit listed a number of legitimate grounds for refiling a patent application, including: (1) filing a divisional application in response to a requirement for restriction, even where one defers the filing of the divisional application until just before the issuance of the parent application; (2) refiling an application with rejected claims in order to present evidence of unexpected advantages of an invention that was not available at the time of an original rejection; and (3) refiling an application to add subject matter to support broader claims. Even in the absence of any of the above reasons, the Federal Circuit noted that it may be appropriate to refile an application so long as the refiling is not "unduly successive or repetitive."

    However, the Federal Circuit noted that refiling an application with claims that were previously allowed for the business purpose of delaying their issuance can be an abuse of the patent system. In the case of multiple examples of repetitive refilings establishing a pattern of unjustifiably delayed prosecution, the Federal Circuit found that the totality of the circumstances may justify application of prosecution laches to remedy the abusive practice.

    In affirming the application of prosecution laches to the asserted Lemelson patents, the Federal Circuit specifically noted the following findings of the lower court: i) 18- to 39-year delay between the filing and issuance of the patents-in-suit; ii) Lemelson had engaged in "culpable neglect" during the prosecution; iii) Lemelson patents occupied the "top thirteen positions" for the longest prosecutions in the U.S. Patent and Trademark Office from 1914 to 2001 and ; iv) the presence of intervening private and public rights. In view of these findings, the Federal Circuit agreed with the District Court's conclusion that "if the defense of prosecution laches does not apply under the totality of the circumstances here, the Court can envision very few circumstances under which it would."

    For the full opinion, see http://fedcir.gov/opinions/04-1451.pdf