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Appeals Court confirms invalidity of bar code patents

A US Appeals Court on Friday confirmed that bar code scanning patents filed by a now deceased philanthropist were unenforceable because of unreasonable delays in the application process for the patents.12 Sep 2005

Advert: Free OUT-LAW breakfast seminars, UK-wide: Marketing and advertising on the web; and Ownership and sharing of customer dataThe 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". One possible application was the scanning of bar codes.

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 Symbol Technologies and Cognex Corporation, claiming that their products infringed upon the Foundation's patents. They were not the only ones: the Foundation has sued over 800 businesses, according to Bloomberg News, and has to date received over $1 billion in licence fees. This money is used for philanthropic purposes, "to inspire, encourage and recognize inventors, innovators and entrepreneurs," according to the Foundation's website.

Symbol and Cognex fought the Foundation.

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.

Symbol and Cognex 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".

In January 2004, the Nevada District Court found in favour of the manufacturers. According to Judge Philip Pro, Lemelson's delay in prosecuting its claims was "unreasonable and unjustified" and 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".

The Foundation appealed, and on Friday the Appeals Court for the Federal Circuit upheld the earlier ruling.

“There are no strict time limitations for determining whether continued refiling of patent applications is a legitimate utilisation of statutory provisions or an abuse of those provisions,” said Judge Alan D Lourie, giving the Court ruling.

He gave examples of legitimate reasons for refiling a patent application, including:

  • The filing of a divisional application in response to a requirement for restriction;
  • The refiling of an application containing rejected claims to show evidence of unexpected advantages of the invention that did not exist previously;
  • To add subject matter to support broader claims as an invention develops; or
  • For other reasons where the refiling is not unduly successive or repetitive.

However, “refiling an application solely containing previously-allowed claims for the business purpose of delaying their issuance can be considered an abuse of the patent system,” wrote the judge.

Judge Lourie's opinion added that this is particularly the case where repetitive refilings show a pattern of "unjustifiably delayed prosecution."

Jesse J Jenner, who led the team of lawyers representing the plaintiffs, called the ruling “the right decision”.

“As a result of the Federal Circuit decision, hundreds of other companies that have been sued or threatened by litigation should now be free of the Lemelson infringement threats,” he said.

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