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Archived updates for Friday, November 18, 2005

Unenfrceability for Prosecution Laches Extended to All Claims in Patents

In a decision that the Intellectual Property Owners Association gives four stars for its impact on patent & trademark law, the court in Symbol Technologies, Inc. v. Lemelson Foundation (Fed. Cir.; November 16, 2005) expanded its finding of unenforceability for prosecution laches to all 76 claims in the 14 Lemelson patents at issue:

"Although the district court did not make its resolution of the laches
issue applicable to the remaining claims, holding that the question would be
decided only if it later became necessary to do so, in our view, the more
appropriate course of action is to apply the laches holding to all of the claims
in the 14 asserted patents. Lemelson does not provide any persuasive reason why
that should not be so.

All of the claims were in issue in this lawsuit, and all were held invalid and not infringed. Moreover, all of the claims are purportedly supported by the same specification with the same effective filing dates. Thus, all of the subject matter in the patents in suit was pending for an unreasonably long period of time, and the delays in prosecution to issuance of the asserted 76 claims applied to all of the remaining claims. Accordingly, in this exceptional case, prejudice to the public as a whole has been shown here in the long period of time during which parties, including the plaintiffs, have invested in the technology described in the delayed patents. These are sufficient bases to extend the district court’s laches holding of
unenforceability of the 76 asserted claims to all of the claims of the asserted
patents. Thus, we hold that all of the claims of the 14 asserted patents are
unenforceable under the doctrine of prosecution laches.

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