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". 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.
