In 2002, the U.S. Court of Appeals for the Federal Circuit revived the
defense of prosecution laches in patent infringement cases. Symbol
Technologies, Inc. v. Lemelson Medical, 277 F.3d 1361 (Fed. Cir.
2002). Specifically, the Federal Circuit held that, as a matter of law,
the equitable doctrine of laches may be applied to bar enforcement of patent
claims that issued after an unreasonable and unexplained delay in prosecution
even though the applicant complied with pertinent statutes and rules.
Thus, a patent could be rendered unenforceable if found to have been obtained
after an unreasonable and unexplained delay in prosecution.
The Symbol Technologies case involved a number of patents relating to
machine vision and bar code technology and owned by the assignee of inventor
Jerome H. Lemelson. The majority of these patents issued from applications
that were filed in 1986 and thereafter. However, because these
applications were filed using the continuing application practice set forth in
35 U.S.C. § 120, they were able to claim the benefit of the filing date of two
Lemelson applications filed in 1954 and 1956. This resulted in delays of
between 18 and 39 years in filing the applications that lead to the
patents-in-suit.
The Federal Circuit traced the origin of the prosecution laches defense to
two Supreme Court cases decided in the 1920's (Woodbridge v. United
States, 263 U.S. 50 (1923) and Webster Electric Co. v. Splitdorf Electric
Co., 264 U.S. 463 (1924)). Despite the long history of the defense,
many decisions in the 50 years prior to Symbol Technologies had rejected
the argument that prosecution of otherwise lawful continuation applications
could be barred by laches. (See, e.g., Circuit Judge Newman's dissent in
Symbol Technologies and Digital Control Inc. v. McLaughlin
Manufacturing Co., 64 USPQ2d 1786, 1788 (W.D.Wash. 2002)). As a
result, it was not uncommon for patent applicants to freely utilize Patent
Office continuation practice (although not typically to the extreme exemplified
by Lemelson). Nevertheless, the Federal Circuit concluded in Symbol
Technologies that the defense of prosecution laches was not unavailable as a
matter of law even though Lemelson had complied with the statutory framework
when filing the continuation applications.
In a subsequent decision, the Federal Circuit extended the principle of
prosecution laches to the Patent Office’s examination of patent applications,
holding that the Patent Office has the authority to reject patent applications
that, if issued as patents, would be unenforceable under Symbol
Technologies. In re Bogese, 30 F.3d 1362 (Fed. Cir.
2002). In this case, the Patent Office rejected Bogese's patent
application on the basis that the applicant had forfeited the right to a patent
after filing a series of eleven continuing applications without attempting to
advance the examination. Prior to making this rejection, the Patent Office
had warned the applicant that another continuation filing would be rejected by
invoking the equitable doctrine of laches, absent any substantive amendment to
advance prosecution. When the applicant subsequently filed another
continuation that did not advance prosecution, the application was rejected on
prosecution laches grounds. The Federal Circuit approved this practice in
Bogese.
In deciding Symbol Technologies and Bogese, its only two
decisions to date involving prosecution laches, the Federal Circuit did not set
forth clear guidelines as to what would constitute an "unreasonable and
unexplained delay" in prosecuting a patent application. Patent applicants
thus enjoy no clear direction on how to prosecute applications without risking a
forfeiture of rights due to prosecution laches. Since the Symbol
Technologies and Bogese decisions, however, there have been a handful
of decisions by U.S. District courts that have shed some light on this
dilemma.
In one such case, the U.S. District Court for Nevada, on remand from the
Federal Circuit, ruled that the Lemelson patents were unenforceable due to
prosecution laches. Symbol Technologies, Inc. v. Lemelson Medical,
69 USPQ2d 1738 (D. Nev. 2004). In ruling against the Lemelson patents, the
Nevada District Court took a totality of circumstances approach, stating that
prosecution laches must be evaluated on a case-by-case basis. Some of the
factors considered by the court included:
(1) Mr. Lemelson's original disclosures were made public in the
1960's and those patents expired by the early 1980's;
(2) before the asserted claims were filed numerous articles and
patents describing machine vision and bar code scanning were published, and
commercial products were developed and marketed;
(3) Mr. Lemelson was aware of the developments in the machine
vision and bar code fields, and yet he still waited;
(4) Mr. Lemelson systematically extended the pendency of his
applications by sitting on his rights, and sequentially filing one application
at a time so that he could maintain copendency among his applications while
waiting for viable commercial systems to be designed and marketed; and,
(5) Mr. Lemelson then drafted and prosecuted hundreds of new
claims in the late 1980's and 1990's specifically worded to cover those
commercial systems.
The court further noted that of the 325 patents issued in the period from
1914 through 2001 having a prosecution pendency of longer than eleven years,
Lemelson holds the top thirteen positions for longest prosecutions. In the
face of this evidence, the court found the prosecution delay to be unreasonable
and unexplained and deemed Lemelson's asserted claims to be unenforceable due to
prosecution laches.
Other district courts have looked to the traditional laches defense (which
addresses a patent owner's unreasonable delay in bringing a lawsuit for
infringement) for guidance in determining when the defense of prosecution laches
applies. Chiron Corp. v. Genentech, Inc., 268 F. Supp.2d 1139
(E.D.Cal. 2002) and Cummins-Allison Corp. v. Glory Ltd., 2003 WL 355470
(N.D.Ill. 2003). This approach applies a two-part test in which the owner
of an otherwise valid patent may be barred from enforcing it if there was an
unreasonable and unexplained delay in prosecuting the patent claim and
the alleged infringer has suffered prejudice as a result.
The Northern District of California has taken a different view, as outlined
in two opinions relating to a patent infringement dispute between patentee
Martin Reiffin and accused infringer Microsoft Corporation. In the first
case, Reiffin v. Microsoft Corp., 270 F.Supp.2d 1132 (N.D.Cal. 2003)
(Reiffin I), decided in March 2003, the court denied defendant's motion
for summary judgment of patent invalidity and unenforceability due prosecution
laches. Then, in August 2003 after the issue of prosecution laches was
tried to the court, the court ruled that plaintiff Reiffin was not barred from
enforcing the patents-at-issue by the doctrine of prosecution laches.
Reiffin v. Microsoft Corp., 69 USPQ2d 1413 (N.D.Cal. 2003)
(Reiffin II). In contrast to the Chiron and
Cummins-Allison decisions, the court held that the elements of
prosecution laches were distinguishable from the elements of traditional laches
and concluded that the demonstration of unreasonable and unexplained delay is
the sole element of the defense of prosecution laches. A party seeking to
raise the prosecution laches defense, the court held, need not prove specific
harm or prejudice to itself. See Reiffin I at 1154.
With respect to what constitutes unreasonableness, the Northern District of
California court held that such determination must be based on an evaluation how
a reasonable patent applicant would prosecute his patent application under the
plaintiff's circumstances. Relevant considerations include whether:
(1) the prosecution history of applicant's patents was typical of
patents in that field (or patents generally);
(2) any unexplained gaps exist in the prosecution history;
(3) the applicant took any unusual steps to speed or delay the
application process;
(4) the Patent Office or other reviewing body took any unusual
steps to speed or delay the application process;
(5) the applicant took any steps to limit or expand public
awareness of his pending application(s) or the inventions he sought to patent
during the course of the prosecution;
(6) any changes in the applicant's prosecution of the
application(s) coincide with or directly follow evolutions in the field that
relate to the claimed invention; and
(7) legitimate grounds can be identified for the abandonment of
prior applications.
See Reiffin II at 1415. After reviewing all of the facts, the
court determined that there was not an unreasonable and unexplained delay
despite evidence demonstrating plaintiff's prosecution was atypical, both in
length and aggressiveness.
The patents (and patent applications) involved in the Symbol Technologies
and Bogese decisions were filed before 1995, that is, before the
General Agreement on Tariffs and Trade (GATT) was incorporated into U.S.
law. Prior to GATT, the life of a U.S. patent was 17 years from its issue
date, regardless of what its earliest effective filing date was. Under
GATT, however, the life of a U.S. patent is essentially limited to 20 years from
its effective filing date. Because the 20-year GATT term defeats the
possibility of extending patent coverage through continuation practice, some
have argued that prosecution laches should only apply to pre-GATT patents.
However, the underlying policy of prosecution laches is twofold. In
addition to addressing the concerns of patentees unfairly extending their patent
coverage, the defense of prosecution laches also address the concern that an
inventor could initially file an application with narrow claims, await
intervening developments, and then file broader claims to cover those
developments. Chiron at 1142. Thus, the Western District of
Washington in Digital Control declined to rule that that prosecution
laches would never apply to a patent subject to the 20-year GATT term, although
it did note that such patents would "tend" to be reasonable. Likewise, the
Eastern District of California in Chiron declined to adopt a bright line
rule that prosecution laches would never apply to a patent subject to a terminal
disclaimer.
Although the case law provides practitioners with some direction concerning
how to avoid prosecution laches, there is still no clear line past which the
defense is established. The good news for patent applicants is that courts
have shown reluctance to apply the defense outside of the most egregious
cases. In addition, the 20-year GATT term will likely lessen application
of the defense. Nevertheless, prosecution laches is still a viable defense
and patent applicants should guard against prosecution strategies that support
an argument of unreasonably prosecution delay. Applicants should
particularly avoid long periods of relative inactivity, namely filing multiple
continuations without claim amendments and/or presenting arguments challenging
Patent Office rejections in an attempt to advance the prosecution.
Patrick Scanlon is a partner Preti Flaherty Beliveau Pachios & Haley
LLP's intellectual property group. For further information, please contact
Mr. Scanlon: pscanlon@preti.com (207)
791-3000
