The late Jerome Lemelson was a renowned and prolific inventor. Born in 1923, Lemelson amassed more than 550 patents covering a range of creations, from automated manufacturing systems to cassette players, from crying baby dolls to camcorders, from fax machines to personal computers.
In 1954 and 1956 Lemelson lodged patent applications that described, according to court papers, "specific methods and apparatus for performing the inspection and measurement of objects".
The 1954 patent was abandoned, but its successor was granted in 1969. The 1956 patent was granted in 1963 – but not before further text and drawings were added. Critics accused Lemelson of manipulating the patent system by constantly amending his pending patent filings as new products came to market. These "continuations-in-part" continued until 1993.
The patents were known as "submarine patents" because they spent so long in the unfathomable depths of the US Patent and Trademark Office. They were assigned, along with numerous other patents, to the Lemelson Medical, Education & Research Foundation, set up by Lemelson's estate when he died in 1997.
Around 1998, the Foundation began sending letters to the Cognex Corporation and Symbol Technologies, claiming that their products infringed upon the Foundation's patents.
Symbol is a manufacturer of bar code readers. Cognex is a large supplier of a machine vision systems. Machine vision is the ability of a computer to 'see', often using robots equipped with video cameras, analogue-to-digital conversion and digital signal processing for purposes such as medical image analysis.
Cognex and Symbol separately filed legal actions asking the court to declare that their products did not infringe upon the patents. In 2000 the cases were consolidated, together with the claims of seven other bar code manufacturers.
Cognex and the bar code manufacturers argued that the patents were invalid because they infringed a doctrine known as "prosecution laches", described by the court as "an equitable doctrine based on the unreasonableness of the delay in prosecuting a patent application".
The court agreed. Judge Philip Pro ruled that Lemelson's delay in prosecuting its claims was "unreasonable and unjustified" and that prosecution laches did apply. Said the Judge, "Decades of delay preceded the assertion of patent claims and Lemelson has offered no adequate explanation for that delay".
He continued:
"Beyond the extraordinary delay presented here, the record also shows that Lemelson effectively extended his patent monopoly by maintaining co-pendency for nearly 40 years through continuation practice, and added new claims to cover commercial inventions in the market place years after his original patents had expired".
Judge Pro concluded that the patents were not infringed by the Cognex or bar code products, and in any event the claims were "invalid for lack of written description and enablement".
According to Cognex, Lemelson and his Foundation have collected in excess of $1.5 billion in licence fees since the early 1990s by asserting their patent portfolio and the threat of complex and costly patent litigation against hundreds of companies around the world that use machine vision systems or bar code readers.
As a result of Friday's ruling, says Cognex, every company will now be able to use machine vision systems and bar code readers, anywhere in their operations, without the threat of litigation from the Lemelson Partnership, and without having to pay licensing fees to them.
"This ruling is truly a cause for celebration...for Cognex and for every company around the world that makes, sells or uses machine vision systems or bar code readers," said Dr Robert Shillman, CEO of Cognex. "It is also a victory for consumers everywhere, because every one of us has paid a hidden tax to Lemelson each and every time that we made a purchase of virtually any item that was manufactured since the start of Lemelson's licensing onslaught."
See: The ruling (33-page PDF)