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Does Lemelson and the Newly Created Defense of Prosecution Laches Require Practitioners to change Their Prosecution Tactics?

By John Withrow
Fay Sharpe Fagan Minnich & McKee LLP

      In Symbol Tech. Inc. v. Lemelson Medical, Education & Research Foundation, L.P., 277 F.3d 1361 (Fed. Cir. 2002), the Federal Circuit held that, even though the applicant complied with the pertinent statutes and rules, the defense of prosecution laches may be applied to bar enforcement of patent claims that issued after an unreasonable and unexplained delay in prosecution. Thus, the Federal Circuit has opened up another defense to patent infringement, especially for patents that rely for priority on parent applications, such as continuation, divisional and continuation-in-part applications.

     The Federal Circuit reaffirmed that prosecution laches was a viable defense in In re Bogese, 303 F.3d 1362 (Fed. Cir. 2002) and began to flesh out what may constitute an unexpected or unreasonable delay in prosecution. Complete failure to advance prosecution will give rise to a defense of or the application of prosecution laches. Bogese, 303 F.3d at 1369. In Bogese, the Federal Circuit upheld the Patent Office’s rejection of Bogese’s claims based on prosecution laches. Bogese filed a series of file wrapper continuations without amending the claims or making arguments that the claims should be allowed. See id. at 1364, 1369. The Federal Circuit agreed with the PTO that this activity was unreasonable and grounds for a forfeiture of Bogese’s rights to a patent.

     With the exception of the above-mentioned two cases, the Federal Circuit has not taken the opportunity to further explain or define what constitutes “unreasonable and unexpected delay” during the prosecution of an application. Until the Federal Circuit further addresses the issue, district court cases can provide patent prosecutors guide posts as to what changes may need to be made in their patent application prosecution and especially their continuation practice.

     In Reifen v. Microsoft Corp., 281 F. Supp. 2d 1149 (N.D. Cal. 2003), the Northern District of California considered seven factors in determining whether a delay in prosecution was unexplained or unreasonable.

Specifically, the court considered:
1.   Whether the prosecution history of the applicant's patent application was typical of applications in that
       field or generally.
2.   Whether any unexplained gaps exist in the prosecution history.
3.   Whether the applicant took any unusual steps to speed or delay the prosecution of the application.
4.   Whether the Patent Office or other reviewing body took any unusual steps to speed or delay the prosecution history.
5.   Whether the applicant took any steps to limit or expand public awareness of the pending applications of the
       inventions sought to be patented during the course of the prosecution history.
6.   Whether any changes in the applicant's prosecution of the applications coincide with or directly follow evolutions in
       the field that relate to the claimed invention.
7.   Whether legitimate grounds can be identified for the abandonment of prior applications.

     In Reifen, the court found that Reiffin's prosecution tactics were atypical both in length and aggressiveness; however, the court could not find any general rule regarding the average or appropriate period for the pendency of a patent application that would support a finding of unreasonable delay based solely on the duration of the prosecution. According to the court, the most troubling aspect of Reiffin's prosecution was that changes in claims closely tracked external developments in the field. Nevertheless, Reiffin's activity was insufficient to support a finding of unreasonable and unexplained delay. The court indicated that Reiffin took advantage of a perceived opportunity to broaden the scope of the claimed invention to maximize the scope of the invention to which Reiffin believed himself entitled.   The court went on to say that several delays were not attributable to the plaintiff’s actions. Additionally, Reiffin aggressively, and often successfully, challenged adverse determinations by the examiner. Further, the court determined that shifts in terminology were not made to delay prosecution, but were in response to the examiner’s requirements that the plaintiff clarify the scope of the invention.

     Another district court examined whether a restriction requirement and an election by the applicant can be cause for finding an unreasonable and unexplained delay. In Digital Control Inc. v. McLaughlin Mfg. Co., Inc., 248 F.Supp. 2d 1019 (W.D. Wash. 2003), the plaintiff moved for partial summary judgment on the defense of prosecution laches asserted by the defendant. Because the defendant failed to raise a genuine issue of material fact regarding any unreasonable or unexplained delay by the plaintiff, the plaintiff's motion for summary judgment was granted. The defendant argued that the patents that issued as continuations or continuations-in-part of a parent application were unenforceable. In the parent patent application the Patent Office issued a restriction requirement upon determining that the application contained four different independent groups of inventions. The plaintiff filed an election to prosecute one of these invention groups in a single patent application. The defendant alleged that the plaintiff should have immediately submitted separate patent applications and that to delay continuation applications over eight years was unreasonable. In holding that the Plaintiff's delay was neither unreasonable nor unexplained, the Court reasoned that the Plaintiff's delay is reasonable and explained by the directives of the PTO and that the PTO required the filing of separate filing applications.
A question arises as to whether the practice of keeping patent applications alive via continuation practice to write claims that cover a competitor’s, should a competitor develop a product similar to the patent owner’s patented product, is still a viable practice. At this point, the case law suggests that filing a continuation application to cover a competitor’s product is still acceptable. The later filed application, however, may still be subject to a review of whether the delay in filing those claims was unreasonable. For a long time patent applicants have been allowed to write claims to cover a competitor’s product. See Kingsdown Medical Consultants Ltd. v. Hollister, Inc., 863 F.2d 867 (Fed. Cir. 1988). On the other hand, “[t]he prosecution laches defense responds to concerns that inventors will file narrow claims, await intervening developments, and then file broader claims to cover those developments.” Chiron Corp. v. Genentech, Inc., 268 F. Supp. 2d 1139 (E.D. Cal. 2002).

     In A&E Products Group L.P. v. Mainetti USA. Inc., 70 USPQ 2d 1080 (S.D.N.Y. 2004), the patents in dispute issued as divisional or continuation applications from earlier patent applications with claims directed to clothes hangers with side sizer tabs. The accused infringer argued that the delay by the patentee of over six years from the date of issuance of the parent patent before the filing of an amendment containing the claims for one of the patents at issue in the lawsuit, of almost five years before the filing of an amendment containing the claims for the second patent at issue, and of almost three years before the filing of an amendment containing the claims of the third patent at issue constituted prosecution laches.

     The district court denied both the accused infringer’s motion for summary judgment that the patents were unenforceable because of prosecution laches and the patent owner’s motion to bar the defense of prosecution laches. The court indicated that the filing of continuation or divisional applications including claims having “reasonable variations” or claims “just broad enough in scope to be useful” suggest that the applications could have been prepared before or soon after the issuance of the first patent and may have been deliberately held in abeyance to affect competition adversely. Id. at 1085.   Such a finding would support a finding of unreasonable and unexplained delay. Claims that were intended to capture technology of competitors, on the other hand, seemed to avoid an inference of an unreasonable and unexplained delay. Id.

     Not many major changes are needed in the prosecution of patent application in view of the new prosecution laches defense. A&E Products indicates that continuation applications directed to cover a competitor's product, as opposed to merely pursue broader protection, should not invoke prosecution laches. The teachings of A&E Products indicates that prior to paying the issue fee, a practitioner might want to communicate with the client asking the client to survey the industry to see whether any competitors have developed a similar product.   If a competitor has developed a product, a continuation application that covers the competitor’s product should not raise any issues of unreasonable or unexplained delay. Reiffin provides practitioners several factors to consider as to whether the delay in prosecution is reasonable and unexplained. Digital Control Inc. instructs that divisional applications when required by a restriction requirement can provide a plausible explanation for protracted prosecution. Accordingly, writing claims of different scope and different categories can prompt the Patent Office into requiring an election of claims for prosecution in a patent application. It appears that there is no requirement to quickly file a divisional application so that the applicant can wait to see what claims are allowed in the first application prior to filing the divisional application.