Prosecution Delay Laches and Inequitable Conduct Prof Merges 11/23/2010

35 U.S.C. 315 Appeal (a) PATENT OWNER.- The patent owner involved in an inter partes reexamination proceeding under this chapter- (b) THIRD-PARTY REQUESTER.- A third-party requester- (1) may appeal under the provisions of section 134, and may appeal under the provisions of sections 141 through 144, with respect to any final decision favorable to the patentability of any original or proposed amended or new claim of the patent

(c) CIVIL ACTION.- A third-party requester whose request for an inter partes reexamination results in an order under section 313 is estopped from asserting at a later time, in any civil action arising in whole or in part under section 1338 of title 28, the invalidity of any claim finally determined to be valid and patentable on any ground which the third-party requester raised or could have raised during the inter partes reexamination proceedings. This subsection does not prevent the assertion of invalidity based on newly discovered prior art unavailable to the third-party requester and the Patent and Trademark Office …

Jerome Lemelson,

id=29 Mr. Lemelson, who died in 1997, was granted more than 500 U.S. patents, making him (from a patent-count standpoint, anyway), one of the most prolific inventors in U.S. history. Some have compared him with Edison (that patent count again), but unlike Edison, most people would have difficulty recognizing his name or what any of his inventions were. Ask the dozens of companies he sued over the years for alleged patent infringement, and observers of developments in patent law, and they may tell you that Lemelson’s most significant (and lucrative) invention was how to game the U.S. patent system.

United States Patent 5,351,078 Lemelson * September 27, 1994 Apparatus and methods for automated observation of objects Apparatus and methods are disclosed for automatically inspecting two- or three-dimensional objects or subjects. A detector and the object are moved relative to each other. In one form, a detector, such as a camera or radiation receiver, moves around an object, which is supported to be rotatable such that the detector may receive electromagnetic energy signals from the object from a variety of angles. The energy may be directed as a beam at and reflected from the object, as for visible light, or passed through the object, as for x-ray radiation.

The detector generates analog image signals resulting from the detected radiation, and an electronic computer process and analyzes the analog signals and generates digital codes, which may be stored or employed to control a display.

Inventors: Lemelson; Jerome H. (Incline Village, NV) Assignee: Lemelson Medical, Education & Research Foundation Limited Partnership (Incline Village, NV) Filed: September 16, 1993

“Continuation Abuse” MAJOR controversy over stringent PTO rules limiting number of continuations that patentee is allowed to file

Supreme Court of the United States. WOODBRIDGE et al. v. UNITED STATES. Decided Nov. 12, 1923.

Justice Taft

In this case we have a delay of 9 1/2 years in securing a patent that might have been had at any time in that period for the asking, and this for the admitted purpose of making the term of the monopoly square with the period when the commercial profit from it would be highest. Not until war or fear of war came was there likely to be a strong demand for rifled cannon and their improvement.

Hence the inventor, having put his order for the issue of a patent into the secret archives of the Patent Office in 1852, sat down and waited until after the Civil War came on in 1861 before seeking to avail himself of the patent, thus postponing the time when the public could freely enjoy it for nearly 10 years.

Meantime other inventors had been at work in the same field and had obtained patents without knowledge of the situation with respect to Woodbridge's invention.

This is not a case where evidence has to be weighed as to the purpose of the inventor. He avows his deliberate intention. This is not a case of abandonment. It is a case of forfeiting the right to a patent by designed delay.

Defenses: Antitrust/Misuse Patents confer market power Market power can be abused When it has been, this may provide a defense for an infringer

Updating Lemelson Cancer Research Tech Ltd. V. Barr Labs, Fed. Cir. Nov. 9, 2010 Original app filed Aug 23, 1982; 1 st office action, Nov. 1983; continuation filed; followed by 10 more continuations, with finally a substantive response, patent issued in Nov. 1993

Cancer Res. Cont’d Federal Circuit held, no prosecution delay laches because no one invested in, worked on, or otherwise used the claimed technology while it was lying dormant No “prejudice,” no “intervening rights” Judge Prost dissented: delay is per se prejudicial

Inequitable Conduct Common law-type defense Very powerful weapon for accused infringers Finding of inequitable conduct renders patent unenforceable

Supreme Court caselaw The Supreme Court has held patents unenforceable only in cases of ‘fraud on the Patent Office.’ See eg, Walker Process Equip., Inc. v. Food Mach. & Chem. Corp., 382 U.S. 172, 175, 176 (1965).

Federal Circuit cases Kingsdown properly requires powerful proof of scienter: “[T]he involved conduct, in light of all the evidence, including evidence indicative of good faith, must indicate sufficient culpability to require a finding of intent to deceive.” 863 F.2d at 876

Materiality requirement “[I]f the Patent Office had been aware of the complete or true facts, the challenged claims would not have been allowed.” Norton v. Curtiss, 433 F.2d 779, 794 (C.C.P.A. 1971).

Materiality (cont’d) Not all omissions or deceptive statements are “material” Some are essentially “harmless”

Therasense Involves status of arguments made before the European Patent Office in an opposition hearing Statements involved a prior patent on the same technology claimed in the patent at issue in the Federal Circuit case

Claim 1, ‘551 Patent

Prior patent: 4,545,382 Specification included statement that lack of membrane was a preferred embodiment No mention of fact that one skilled in the art would believe lack of membrane to be an inventive feature of the invention

District court Failure to inform PTO of this argument at the European Patent Office constituted inequitable conduct Patent held unenforceable

Federal Circuit opinion Affirmed trial court Raised proper standard for Inequitable conduct as an issue for en banc appeal

Therasense brief Constitutional issues Conformity with other branches of IP law Practical considerations