Egregious Delay in Prosecution of Lemelson Patents Rendered the Claims Unenforceable

Case: Symbol Tech. v. Lemelson Med. (Fed. Cir. 9/09/05 - No. 04-1451)

The One Sentence Summary: The Federal Circuit panel affirmed the district court's ruling that the Lemelson patents at issue were unenforceable due to prosecution laches when the claims took 18 to 39 years from filing to issuance.

Federal Circuit Holdings:

• The district court did not err in finding that the Lemelson bar code patents at issue were unenforceable due to prosecution laches. The patent claims at issue had issued 18 to 39 years after filing.
• The district court should apply a totality of the circumstances rule, and prosecution laches should be found only in the most egregious of circumstances: "Thus, there are no strict time limitations for determining whether continued refiling of patent applications is a legitimate utilization of statutory provisions or an abuse of those provisions. The matter is to be decided as a matter of equity, subject to the discretion of a district court before which the issue is raised. There are legitimate grounds for refiling a patent application which should not normally be grounds for a holding of laches, and the doctrine should be used sparingly lest statutory provisions be unjustifiably vitiated. The doctrine should be applied only in egregious cases of misuse of the statutory patent system."