The late Jerome H Lemelson is well known to numerous
manufacturers, not only in the United States but all around the
world. During his lifetime, Lemelson, who was the extremely
litigious inventor-owner of a large number of patents granted by
the United States and many other countries, was also famous for his
pursuit of what are known in the United States as submarine
patents. The term submarine, which is not unique to Lemelson
patents, is based upon the fact that US patents so termed have
matured from divisional or continuation applications of parent,
grandparent, or even more remote ancestor patent applications
filed, in some cases, 20 to 30 years before issuance of the
submarine descendant patent.
Applications for the submarines thus lurked, undisclosed, under
the secrecy provisions of 35 USC § 135 within the US Patent Office
for years, but seemingly always suddenly issued after some device
arguably blanketed by the submarine claims had become an
outstanding commercial success. It must, in this connection, be
remembered that prior to January 1 1995 the term of a US patent
always commenced at the date of issuance (rather than the filing
date of its first supporting application) and ran for 17 years
thereafter.
As a consequence, Lemelson and the foundation he established
late in his lifetime, the Lemelson Medical, Education &
Research Foundation Limited Partnership, in some cases is said to
have collected negotiated royalties for 17 years after issuance of
a patent based on a parent application, and then continued to
collect royalties at the same level on one or more submarine
patents springing from divisional or continuation application
progeny of the same original parent application for at least 17
additional years after they issued.
Since Lemelson and, later, his Foundation enjoyed considerable
success in litigating Lemelson patents against infringers, many
potential targets of Lemelson suits were happy to have the
opportunity to accept licenses in lieu of suit, despite the unusual
length of many payment periods.
On January 24 2002 the Court of Appeals for the Federal Circuit
acting through a two judge majority of a three judge panel,
rendered a decision suggesting that the Lemelson royalty saga may
now be nearing an end, despite the 183 unexpired patents and many
pending patent applications the Foundation allegedly still holds.
Specifically, in Symbol Technologies Inc v Lemelson Foundation
LP, 61 USPQ 2d 1515 (Fed Cir 2002), the Court reversed and
remanded for trial a Nevada district court's dismissal of two
declaratory judgment suits each seeking a declaration of
invalidity, unenforceability and non-infringement (of 10 Lemelson
US patents in one instance and six such patents in the other).
The premise of each of the dismissed complaints was that patent
claims issued after an unreasonable and unexplained delay in
prosecution, even one that facially complies with time limits set
by statute, may be subject to a decree of invalidity or permanent
unenforceability based on the equitable doctrine of laches.
To reach the conclusion that the complaints do state a claim for
relief upon which relief can be granted, provided the proofs at
trial justify the contentions pleaded in the complaint, the
two-judge majority relied upon two Supreme Court decisions,
Woodbridge v United States, 263 US 50 (1923) and Webster
Electric Co v Splitdorf Electric Co, 264 US 463 (1924) and an
article by one of the drafters of the 1952 Patent Act, the most
recent Congressional revision of the entire United States Patent
Code. The article, by PJ Federico, a long time US Patent Office
official, is entitled Commentary on the New Patent Act and
is based upon a series of lectures given between the 1952 enactment
of the 1952 Act and its 1954 effective date, at locations across
the United States, as part of an effort to educate patent
practitioners' groups about the revised patent code. The
Commentary was first published in the 1954 edition of 35
United States Code Annotated.
The two cited Supreme Court opinions relied on by the majority
each held that a patentee, by designed delay in seeking the
particular patent in suit, forfeited the right to the protection of
that patent. The Federico Commentary points out that 35 USC
§ 282, as enacted in 1952, specifies "noninfringement, absence of
liability for infringement, or unenforceability" as defences that
may be pleaded in an infringement suit and that this statutory
language embraces "the defenses such as that the patented invention
has not been made, used or sold by the defendant, license; and the
equitable defenses such as laches, estoppel and unclean hands "(61
USPQ 2d at 1519).
The dissenting judge expressed concern that "an applicant's full
adherence to statutory procedures can nonetheless deprive the
applicant, retrospectively, of a property right that was granted in
accordance with law" (61 USPQ 2d at 1522). This, however, ignores
the fact that the matter of whether any US patent "was granted in
accordance with law" is always open to inquiry in a trial court.
All US patents are presumptively valid under 35 US § 282 and
are equally subject to a general presumption, applicable to all
grants by governmental agencies of the United States, that they
were regularly and properly granted pursuant to law. Both
presumptions, however, are, by definition, always rebuttable
by contrary evidence from persons attacking a patent in a court of
law. By overlooking both the presumptions and their fundamental
nature, the dissent succumbs to circular reasoning and adds little
to the discussion.
The panel majority's ruling ? that so-called "prosecution
laches" is a cognizable ground for holding a patent unenforceable ?
is eminently correct under prevailing US law. It remains to be seen
whether the district court, on remand, will conclude that the
Lemelson conduct in obtaining at least some of the submarine
patents identified in the resuscitated complaints amounted to the
"designed delay" that forfeits the right to a patent.
Meanwhile, this situation is one which a considerable proportion
of the world's patent-savvy people will no doubt be monitoring
closely.
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| Mary Helen Sears |
