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Symbol Technologies, Inc. v. Lemelson Medical
Citations: 277 F.3d 1361; 2002 WL 89019Docket: No. 00-1583
Court: Court of Appeals for the Federal Circuit; January 23, 2002; Federal Appellate Court
Symbol Technologies, Inc. and Cognex Corporation appeal a dismissal from the United States District Court for the District of Nevada regarding their claims against Lemelson Medical, Education, Research Foundation for patent infringement. Lemelson, claiming ownership of numerous patents related to machine vision and automatic identification technology, sent letters to customers of Symbol and Cognex alleging infringement. The plaintiffs sought a declaratory judgment to declare the patents invalid, unenforceable, and not infringed. The district court determined there was a sufficient case or controversy but dismissed the plaintiffs’ claims based on prosecution laches. The appeal focuses on whether prosecution laches can bar patent claims that were issued following an unreasonable delay in prosecution, despite compliance with relevant statutes. The court reviews the dismissal de novo, adhering to Ninth Circuit standards, and has jurisdiction under 28 U.S.C. 1292(b). The concept of prosecution laches, which can render patents unenforceable due to unexplained delays, originates from two Supreme Court cases: Woodbridge v. United States and Webster Electric Co. v. Splitdorf Electrical Co. Woodbridge delayed for nine years before requesting the issuance of his patent, seeking to amend it to include innovations developed during that time. He claimed the delay was justified because his invention had only recently gained financial value. The Court determined that this lengthy delay resulted in a forfeiture of his patent rights, emphasizing that Woodbridge's actions were intentional to align the patent's term with a period of maximum commercial profit. During this period, other inventors worked in the same field without knowledge of Woodbridge's situation. The Court distinguished this case from abandonment, categorizing it as a forfeiture due to intentional delay. The following year, in the case of Webster, the Court ruled that an unreasonable eight-year delay rendered certain patent claims unenforceable. Kane's patent application, filed in 1910 and issued in 1916, faced additional delays due to divisional applications and an interference that was ultimately lost. The claims in question were disclosed and in general use during this time, leading the Court to classify the delay as unreasonable and constituting laches, thereby nullifying Kane's rights. Subsequent cases affirmed the defense of prosecution laches against claims that adversely affected public rights. In Crown Cork & Seal Co. v. Ferdinand Gutmann Co., the Court noted that a presumptive two-year delay was not a strict rule but rather indicative of unreasonableness, particularly when intervening rights were present. However, it clarified that without such rights, the lapse did not constitute laches. Similarly, in General Talking Pictures Corp. v. W. Electric Co., the defense of prosecution laches was rejected due to the absence of intervening public rights, confirming that the continuation applications were timely filed. Legal treatises from the time supported the recognition of the prosecution laches defense, underscoring its established presence in patent law. Lemelson contends that the defense of prosecution laches is inapplicable for three main reasons: 1. The rule established in Webster and subsequent cases is restricted to claims arising from interference actions. Lemelson references legal commentary to support this view, but the Supreme Court’s ruling in Crown Cork & Seal Co. v. Ferdinand Gutmann Co. indicates that the claims in Webster were not confined to interference proceedings. The focus in Webster was on the reasonableness of delays in filing, rather than on interference issues. Crown Cork affirmed the validity of prosecution laches without limiting it to interference cases and rejected a strict two-year delay rule as inherently unreasonable. 2. Lemelson argues that the enactment of the 1952 Patent Act, specifically sections 120 and 121, negated the applicability of laches. These sections allow continuation and divisional applications to retain the filing dates of their parent applications. However, the legislative history does not support Lemelson's assertion that Congress intended to abolish prosecution laches. The sections codified practices that existed prior to 1952, and the history shows no intention to alter the Supreme Court's interpretation of these practices or to eliminate the laches defense. 3. The coexistence of prosecution laches and continuation practices is acknowledged, and the legislative history of the 1952 Act suggests that Congress intended to maintain the defense. Commentary from P.J. Federico, a key drafter of the Act, reinforces this interpretation, indicating that the legislative intent was to uphold the defense of prosecution laches alongside the newly codified continuation practices. Federico submitted drafts of his commentary on the Patent Act to Henry Ashton and the Drafting Committee, which included Judge Giles S. Rich and Paul Rose. This commentary provides critical insights into the drafters' intentions, particularly concerning the defenses against patent infringement included in Section 282. This section outlines five defenses, with the first addressing noninfringement and the enforceability of patents, the latter of which was clarified by a Senate amendment. The defenses encompass various legal arguments, including equitable defenses such as laches, estoppel, and unclean hands, indicating that the drafters intended laches to be a valid defense. The text also references Lemelson's claim that two non-precedential opinions should bind the court, drawing on Anastasoff v. United States, which argued that the Eighth Circuit's rule against relying on unpublished decisions violates Article III of the Constitution. Anastasoff asserted that the doctrine of precedent was established by the Constitution's Framers. However, the current document counters this view, endorsing the analysis in Hart v. Massanari, which holds that Article III does not prohibit non-precedential opinions and that the concept of precedent could not have been fully incorporated into Article III due to the historical context of case reporting. Thus, Anastasoff's restrictive interpretation of precedent is deemed overly broad and inconsistent with the realities of legal practice at the time of the Constitution's drafting. Reporters historically manipulated or omitted judicial cases they deemed incorrectly decided, resulting in unreliable accounts of judicial decisions at the drafting of Article III. Non-precedential opinions existed prior to 1787, and the Framers likely recognized this concept. As the number of reported cases increased, commentators warned against reporting cases that did not meaningfully contribute to legal precedent, citing concerns over the overwhelming growth of case law. Sir Francis Bacon and Lord Coke previously criticized the abundance of repetitive cases, predicting modern frustrations regarding case volume. The Judicial Conference of the United States acknowledged these issues, resolving to publish only opinions of general precedential value and encouraging succinctness. This led to the acceptance of 'unpublished' or nonprecedential decisions, which do not allow for the reinvention of law but rather facilitate the determination of a case's significance to the legal framework. Courts face challenges from issuing redundant opinions on well-established principles, which contributes to legal imprecision and unpredictability. Ultimately, the judgment of the United States District Court for the District of Nevada is reversed and remanded for further proceedings, with the court expressing agreement with the thorough analysis provided in the Hart case. The reported decisions of the courts of appeals have now filled 575 volumes of the Federal Reporter over two decades.