Lemelson Meets His Waterloo

In Symbol Technologies, Inc., et al. v. Lemelson Medical, Education & Research Foundation, LP (Fed. Cir.; September 9, 2005) , the appellate court agreed with Symbol that the lower court did not abuse its discretion in holding that Lemelson’s patents are unenforceable under the doctrine of prosecution laches:

The [lower] court found that an 18- to 39-year time period had elapsed between the filing and issuance of the patents in suit. Symbol III, 301 F. Supp. 2d at 1355. That period of time is not what is contemplated by the patent statute when it provides for continuation and continuation-in-part applications. Patent applications should normally be permitted to issue when they have been allowed and the statutory requirements complied with. The court also found that Lemelson had engaged in “culpable neglect” during the prosecution of these applications and it recognized the adverse effect on businesses that were unable to determine what was patented from what was not patented. It noted that the Lemelson patents occupied the “top thirteen positions” for the longest prosecutions from 1914 to 2001 The court also cited the existence of “intervening private and public rights.” It concluded that “[i]f the defense of prosecution laches does not apply under the totality of circumstances here, the Court can envision very few circumstances under which it would.” Under those circumstances, we can hardly conclude that the court abused its discretion in holding the involved patents unenforceable on this ground. The court thoroughly examined the facts and the equities, and it exercised its discretion reasonably. We therefore affirm the district court’s holding of unenforceability.

The Federal Circuit also discussed Webster Electric Co. v. Splitdorf Electrical Co., 264 U.S. 463 (1924), where the Supreme Court applied the doctrine of prosecution laches to render patents unenforceable. Although those cases involved a nine-and-a-half-year delay and an eight-year delay, respectively, the Supreme Court later held that the presumptive two-year time limit referred to in Webster was dictum because it was not directly applicable to the issue of laches on which the case was decided. "Thus," the Federal Circuit concluded, "there are no strict time limitations for determining whether continued refiling of patent applications is a legitimate utilization of statutory provisions or an abuse of those provisions. The matter is to be decided as a matter of equity, subject to the discretion of a district court before which the issue is raised."

However, refiling an application solely containing previously-allowed claims for the business purpose of delaying their issuance can be considered an abuse of the patent system. See Bogese, 303 F.3d at 1368-69 (discussing Ex parte Hull, 191 USPQ 157 (Bd. Pat. App. & Interfs. 1975)). In particular, multiple examples of repetitive refilings that demonstrate a pattern of unjustifiably delayed prosecution may be held to constitute laches. Taken singly, the delay in the prosecution on any one particular
application will surely not appear to merit relief by the courts in equity. On the other hand, an examination of the totality of the circumstances, including the prosecution
history of all of a series of related patents and overall delay in issuing claims, may trigger laches.

The Federal Circuit went on to identify several "legitimate grounds for refiling a patent application which should not normally be grounds for a holding of laches:"

• Filing a divisional application in response to a requirement for restriction, even when one defers the filing of a divisional application until just before the issuance of the parent application.
• Refiling an application containing rejected claims in order to present evidence of unexpected advantages of an invention when that evidence may not have existed at the time of an original rejection.
• Refiling an application to add subject matter in order to attempt to support broader claims as the development of an invention progresses.
• Refiling an application in the absence of any of these reasons, provided that such refiling is not unduly successive or repetitive.

With 562 U.S. patents to his credit, Jerome Lemelson was the most prolific inventor since Thomas Edison (1093 patents). Using royalties from his creative legacy, his family's Lemelson Medical, Education & Research Foundation Partnership has provided millions of dollars for programs such as the annual US $500 000 Lemelson-MIT Award, touted as the world's largest single prize for invention and innovation. However, his detractors attributed much of his success to the use of Byzantine tactics for exploiting loopholes in the patent system. Learn more about the Lemelson controversy here.

"Until Lemelson, there has rarely – if ever – been a case brought to the Federal Circuit where a primary goal was to set the stage for a Supreme Court appeal," writes Professor Hal Wegner. "Here, appellate counsel was specifically chosen from amongst Supreme Court appellate specialists. " Lemelson now represents an eighth case to be added to his "Seven IP Cases on the Radar Screen for the October 2005 Term of the Court." Get a transcript of the appellate court hearing from thePatently-O Blog.