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Symbol Tech., Inc. v. Lemelson Med., Educ., & Research Found., LP

422 F.3d 1378, 76 U.S.P.Q.2d 1354 (2005)

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Symbol Tech., Inc. v. Lemelson Med., Educ., & Research Found., LP

United States Court of Appeals for the Federal Circuit

422 F.3d 1378, 76 U.S.P.Q.2d 1354 (2005)

Facts

Lemelson Medical, Education & Research Foundation, LP (Lemelson) (defendant) held numerous unexpired patents and pending patent applications related to barcode technology. Symbol Technologies, Inc. (Symbol) (plaintiff) made and sold barcode scanners and related products. After Lemelson sent letters to Symbol customers asserting that the use of Symbol products infringed Lemelson’s patents, Symbol filed a motion for declaratory judgment in federal court. Symbol requested that the court find the 14 asserted Lemelson patents were unenforceable under the doctrine of prosecution laches. The district court initially dismissed Symbol’s claim for prosecution laches but was reversed by the court of appeals. The district court conducted a bench trial on the claim of prosecution laches The district court held that prosecution laches applied and the Lemelson patents were unenforceable under the totality of the circumstances. Evidence presented at trial established that the 14 Lemelson patents were issued between 18 and 39 years after the applications were first filed. The district court found that Lemelson acted with culpable neglect in not concluding the patent-prosecution process. Lemelson refiled continuing applications for the patents in a repetitive and unnecessary manner. The district court also found that the delay harmed businesses because the scope of coverage and status of the Lemelson patents were left undetermined. Finally, the district court noted that intervening public and private rights supported a finding of patent unenforceability under the doctrine of prosecution laches. Lemelson appealed.

Rule of Law

Issue

Holding and Reasoning (Lourie, J.)

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