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After hundreds of companies paid inventor Jerome Lemelson more than $1.5 billion in licensing fees, the U.S. Court of Appeals for the Federal Circuit has concluded that his patents aren’t enforceable after all. Symbol Technologies v. Lemelson Medical, Education & Research Foundation, No. 04-1451. The Federal Circuit ruled that Lemelson’s 18- to 39-year delay in prosecuting patent claims relating to machine-vision and bar-code technologies was unreasonable. The case has been closely watched because it involves Lemelson’s use of what have been dubbed “submarine” patents because they are kept in the U.S. Patent and Trademark Office for years only to come to the surface after the technologies have evolved. Lemelson, who died in 1997, submitted his original application on machine vision in the 1950s. His first patent on the technology was issued in 1963; Lemelson filed continuation applications and was granted additional patents in the 1980s when the technology was in widespread use. “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,” Judge Alan Lourie wrote for the three-judge panel. “However, refiling an application solely containing previously allowed claims for the business purpose of delaying their issuance can be considered an abuse of the patent system.” Lourie agreed with a Nevada district court’s 2002 decision that Lemelson’s 18- to 39-year delay in filing and prosecuting the claims in 14 patents was unreasonable and unjustified. “That period of time is not what is contemplated by the patent statute when it provides for continuation and continuation-in-part applications,” Lourie said. Since Lemelson’s death, the foundation he set up has continued to go after companies that use machine-vision and bar-code equipment. Hundreds of companies in the semiconductor, computer, electronics, telecommunications and auto industries have licensed his patents. The Federal Circuit’s decision “will hopefully spare hundreds more companies from having to deal with these patents,” said Jesse Jenner, a partner in Boston-based Ropes & Gray’s New York office, who represented Symbol Technologies Inc., a bar-code manufacturer, in the case. “It’s unfortunate that so many companies paid for licenses they shouldn’t have had to pay for.” Jenner said there is a good chance Lemelson’s attorneys will either seek reconsideration or file a petition for certiorari with the U.S. Supreme Court. They had asked the high court to look at the delay issue after the Federal Circuit’s earlier ruling in the case. In January 2002, the Federal Circuit found that unreasonable delay was a valid argument against patent infringement and sent the case back to the district court. Cognex Corp., a manufacturer of machine-vision products, sued Lemelson in 1998, seeking a ruling that the inventor’s patents were invalid and not infringed by Cognex and users of its products. Symbol Technologies and other manufacturers of bar-code scanners filed a similar suit in 1999 and the two cases were combined. Edward Reines, a partner at Weil, Gotshal & Manges’ Redwood Shores, Calif., office, said the case “shouldn’t have a major impact on patent prosecution or patent litigation generally” because it’s now impossible to have a 20-year delay between the filing of a patent application and its issuance. Under the General Agreement on Tariffs and Trade, as of 1995, the term of a patent is 20 years from the date of the original application. Prior to that, the patent term was 17 years from the date of issuance. But the decision is good news for the many companies who’ve battled Lemelson and his estate over the years.

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