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Issue 9 | February 12, 2002
Lemelson Vulnerable on Prosecution Laches

In Symbol Technologies v. Lemelson Partnership, the Federal Circuit has formally recognized the equitable defense of patent prosecution laches. In reversing the lower court's granting of a motion to dismiss for failure to state a claim, the decision leaves no doubt that "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 the pertinent statutes and rules." However, the last part of that statement opened the door to a vigorous dissent that has already caught the attention of many practitioners.

Jerome Lemelson has been awarded at least 562 U.S. Patents. The machine vision patents at issue in this case were issued between 1970 and 1994, while claiming priority back to the mid-1950s. By relying on a chain of unpublished continuing applications, these so-called "submarine patents" did not surface until the claimed technology was already widely adopted. Some have also derided these awards as mere "paper patents" because the technology described in the earliest applications was allegedly never built.

According to an article by Greg Smith, hundreds of companies have been sued and/or licensed by the former Mr. Lemelson and his assignees. Their strategy reportedly involved a combination of low pricing and selective enforcement against users of the technology who may have less at stake than their technology suppliers. However, in 1998, machine vision manufacturer Cognex Systems filed a Declaratory Judgment action that was eventually joined with a similar suit by a group of bar code manufacturers led by Symbol Technologies. If Cognex is successful on its prosecution laches defense, then it could have a significant impact on the many other cases involving Lemelson's patents.

This article was prepared by Bill Heinze and Carla Stone at Thomas, Kayden, Horstemeyer & Risley. The information contained in this e-mail is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.


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