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Issue 27 | August 19, 2002
The Lemelson Patents - Lessons Learned
 At the recent Association of Patent Law Firms Roundtable dealing with commentary on The Lemelson Patents, the presenters highlighted "Lessons Learned" and "Predictions For The Future". The following summarizes that part of the presentation. (For the full audio presentation please see www.aplf.org/events)

LESSONS LEARNED
  1. Start early if you want to put together a joint group that is successful. You can't wait until you are sued.
  2. Someone has to take the lead. Everyone seems to want to sit around and hope somebody else is going to do something. Somebody has to take the lead in forming a group and get the permission of their General Counsel in order to get the ball rolling.
  3. Whoever takes the lead must be seen as neutral. Sears took the lead in the Lemelson group, but our firm, as the administrator of the group, made it clear that we were interested just as much in the small retailers as the large retailers. We eventually set-up a Managing Committee that had representation on it from different-sized retailers. Each size category was represented.
Therefore, I would suggest that when you first get a letter inquiring about taking a license under some patent, that's the time to consider whether some of your peer companies might have received the same letter and whether there might be some benefit from trying to share information. Sometimes these initial letters are very benign in tone. They don't threaten infringement suits. The reason they don't is because the patentee doesn't want to create an actual and present controversy, which would allow you to pre-empt it by bringing a declaratory judgment action.

I know in our group, just by virtue of our firm's having served in the role of a neutral administrator of the group, we have recently become a clearing house for inquiries relating to other technologies. We've gotten inquiries relating to the Katz patents, the Tech Search patents, and the Dickens Soder, Judson and Data Scope patents, just to mention a few. We have managed to put people in touch with others who know a lot about these patents so we will likely continue to serve a useful role in this regard even post-Lemelson. It is at these early stages that common interest/joint defense groups can best be formed.

PREDICTIONS

Finally, my prediction. With the caveat that any litigator's prediction must be taken with a huge grain of salt, I think the Lemelson patents will eventually be invalidated. I think the Supreme Court is unlikely to grant certiorati first of all, because it only grants cert. in a miniscule percentage of cases. Secondly and more importantly, the applicable law was changed in 1995 so that patents now run 20 years from the date of the application, not 17 years from the day of issuance, and in many cases become public at a certain point in the process. Lemelson was grandfathered under the 1995 statute, but future patent applications will not be able to remain pending in the Patent Office as long as the Lemelson patents did. Therefore, "submarine patents" of the Lemelson type are not a continuing problem that the Supreme Court would likely think merits review.

Any application for cert. is due in June. [Editor's note: the petition has now been filed by Lemelson.] If the Supreme Court denies Lemelson's anticipated petition for cert., then the case will be remanded to the lower court, and that court will have before it the precedent of Magistrate Atkins' earlier decision in the Ford case. As noted, Magistrate Atkins issued a lengthy and well-reasoned opinion and found prosecution laches. The only reason that Judge George reversed himself in that case after initially adopting Magistrate Atkins' opinion was, not that he did not find laches on the facts, but because he wasn't sure laches still existed as a legal defense after the 1952 Patent Act. The Federal Circuit has now said it does exist as a defense. Since Magistrate Atkins' opinion dealt with the very same facts and was well-reasoned, I think it would be very easy for the lower court in The Symbol Technologies case simply to decide to follow it.

I realize that Judge Newman in her dissent to the Federal Circuit's decision pointed out concerns, and I think justifiable concerns, about the fact that the court is creating (or rather reaffirming) a defense of prosecution laches which has uncertain parameters. This could just lead to more litigation. But although the defense may have uncertain parameters, I think if this case, where there was a 40-year delay, does not constitute prosecution laches, what facts ever could constitute laches? If laches is not found on these facts, then I think the decision by the Federal Circuit will be rendered largely meaningless. In other words, if this isn't laches, I can't imagine another case that would be. Hence my prediction that the Lemelson patents ultimately will fall. (Presented by William Baker & Patrick Ertel of Marshall Gerstein & Borun)

To discuss this topic further, please contact the author, William Baker & Patrick Ertel at Marshall Gerstein & Borun. The information contained in this email 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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