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Patent Prosecution Laches After Symbol Technologies

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Patent Prosecution Laches After Symbol Technologies The Submarine Defense System Misfires: Patent Prosecution Laches After Symbol Technologies Christopher C. Smith* TABLE OF CONTENTS I. INTROD UCTION .................................................................................................. 236 II. WHEN THE "SUBMARINE" ATACKS: THE PATENT PROSECUTION PR OC ESS ............................................................................................................ 238 III. THE "SUBMARINE" DEFENSE SYSTEM IS PUT IN PLACE: U.S. SUPREME COURT PRECEDENT CITED IN SYMBOL TECINOLOGIESAND THE 1952 PATENT ACT ...................................................................................................... 24 1 A . W oodbridge v. United States ....................................................... 241 B. Webster Elec. Co. v. Splitdorf Elec. Co ....................................... 242 C. Crown Cork & Seal v. Ferdinand Gutmann Co .......................... 243 D. The Effect on Laches by The PatentAct of 1952 ......................... 244 IV. RELOADING THE "SUBMARINE" DEFENSE SYSTEM: PROSECUTION LACHES REvISrrED IN THE FEDERAL CIRCUIT ............................................... 244 A. Symbol Technologies, Inc. v. Lemelson Med., Educ., & R esearch Found ............................................................................ 244 B . In re Stephen Bogese .................................................................... 245 C. State of ProsecutionLaches After Symbol Technologies and In re B ogese ................................................................................. 247 V. THE "SUBMARINE" DEFENSE SYSTEM OFF-TARGET: THE DISTRICT COURTS TRY TO MAKE SENSE OUT OF SYMBOL TECHNOLOGIESAND IN RE B OGESE ......................................................................................................... 247 A. Current Confused State of ProsecutionLaches ........................... 247 B. Third Circuit-IntuitiveSurgical, Inc. v. Computer Motion In c ................................................................................................2 4 9 C. Seventh Circuit--Cummins-Allison Corp. v. Glory Ltd ............. 250 D . N inth C ircuit ................................................................................ 251 1. Symbol Technologies, Inc. v. Lemelson (Revisited) ............... 251 2. Digital Control,Inc. v. McLaughlin Mfg. Co ........................ 252 3. Martin GardnerReiffen v. Microsoft Corp............................ 253 4. Gen-Probe, Inc. v. Vysis, Inc................................................. 253 * B.S.E., 2002, University of Michigan, Ann Arbor: JD Candidate, May 2005, University of California, Los Angeles. As of September 2005, the author will be joining the law firm Christie, Parker and Hale, L.L.P. in Pasadena, CA. Special thanks to: Prof. Stephen Munzer, for his guidance in writing this paper, Robert Green, for helping me understand the intricacies of patent prosecution; Ann Byme, Jeff Goldman, and Thomas Smith for their editorial input; and Jeff Thennisch and Eric Dobrusin, for planting the "seed" which became this paper. GONZAGA LAW REVIEW [Vol. 40:1 VI. SIGHTING IN THE "SUBMARINE" DEFENSE SYSTEM: A PROPOSED STANDARD FOR PROSECUTION LACHES ..........................................................254 A. Intentional and UnreasonableDelay ...........................................255 B. The Defendant's Rights Were Adversely Affected .......................256 C. Clearand Convincing Burden of Proof ......................................257 VII. C ONCLUSION .....................................................................................................257 I. INTRODUCTION Throughout history the law has emphatically protected the property rights of one person from the interference of another. The Framers integrated such protection into the Constitution for intellectual property rights when they authorized Congress "[t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries."' In exercising this power, Congress balanced the need to provide an incentive for people to invent with the desirability of retaining the long term benefits of these inventions for society. 2 Section 154 of the Patent Act 3further accomplishes this goal by limiting a patentee's exclusive rights to a fixed term. However, some patentees have delayed the issuance of their patents until the patent has greater commercial appeal.4 Experts refer to these patents as "submarine" 1. U.S. CoNsT.art , § 8, cl. 8. 2. See Pfaffv. Wells Elecs., Inc., 525 U.S. 55, 64-65 (1998). The Court stated that: Consistent with these ends, § 102 of the Patent Act serves as a limiting provision, both excluding ideas that are in the public domain from patent protection and confining the duration of the monopoly to the statutory term... [t]he patent laws therefore seek both to protect the public's right to retain knowledge already in the public domain and the inventor's right to control whether and when he may patent his invention. Id. 3. See 35 U.S.C. § 154(a)(2) (2000). Under § 154(a)(2) the term of a patent is: Subject to the payment of fees under this title, such grant shall be for a term beginning on the date on which the patent issues ending 20 years from the date on which the application for the patent was filed in the United States or, if the application contains a specific reference to an earlier filed application or applications under section 120, 121, or 365(c) of this title, from the date on which the earliest such application was filed. Id. 4. See Woodbridge v. United States, 263 U.S. 50, 53 (1923). The Court stated: In this case we have a delay of nine years and a half 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 Id.at 56. 2004/05] PATENT PROSECUTION LACHES patents.5 This practice can result in great inequities to third parties who continue to invent while another application covering the same subject matter of their inventions remains concealed at the Patent & Trademark Office (PTO).6 In response, the courts developed the equitable defense of prosecution laches that gives the accused infringer recourse when a patentee has unreasonably prolonged the issuance of his patent.7 Prosecution laches bars relief for infringement when the patentee has unreasonably delay has prejudiced the delayed asserting 8his patent rights and this unreasonable accused infringer. For many years, prosecution laches was an option for accused infringers.9 Recently, however, it had become unclear whether the courts still accept this defense. 10 As a result, the Federal Circuit revisited the question of whether laches still provides a viable defense for patent infringement cases in Symbol Technologies, Inc. v. Lemelson Medical, Education & Research Foundation."I In Symbol Technologies, the Federal Circuit held that the defense of prosecution laches was still a viable defense for those accused of patent infiingement." Unfortunately, the court failed to give any other guidance as to how the defense of laches is to be applied, thus leaving the district courts to develop their own application of the doctrine. 13 The district courts split in their interpretation of the doctrine, thus14 exposing Symbol Technologies' failure to develop a uniform standard for laches. 5. See Steve Blount, The Use ofDelaying Tactics to Obtain Submarine Patents andAmend Around a Patentthat a Competitorhas DesignedAround, 81 J. PAT. & TRADEMARK OFF. Soc'Y 11, 15 (1999). "Submarine patents work by keeping the patent application afloat in the patent office through the use of continuing applications." Id 6. See Woodbridge, 263 U.S. at 56. The Court concluded that goals of the patent laws are not accomplished "if the inventor is allowed to conceal his invention to be brought forward in some after time to thwart and defeat a more diligent and active inventor, who has placed the benefit of his invention within the reach and knowledge of the public." Id (quoting In re Appeal of Mower, 15 App. D.C. 144, 152-53 (1899)). 7. See Dave Ghatt, Bogese Case Comment: An Examination of the Patent and Trademark Office's Authorty to Make Rejections Based on Prosecution History Laches, 85 J. PAT. & TRADEMARKOFF. Soc'Y 751,753 (2003) (discussing the early case law on patent prosecution history laches). 8. Id 9. See, e.g., Crown Cork & Seal Co. v. Ferdinand Gutmann Co., 304 U.S. 159 (1937); Webster Elec. Co. v. Splitdorf Elec. Co., 264 U.S. 463 (1924). 10. See, e.g., Ricoh Co. v. Nashua Corp., No. 97-1344, 1999 WL 88969, at *3 (Fed. Cir. Feb. 18, 1999); Bott v. Four Star Corp., Nos. 88-1117, 88-1118, 1988 WL 54107, at *1 (Fed. Cir. May 26, 1988). 11. 277 F.3d 1361, 1363 (Fed. Cir. 2002). 12. ld at 1366. 13. See, e.g., Intuitive Surgical, Inc. v. Computer Motion, Inc., No. CIV.A.01-203-SLR, 2002 WL 31833867, at *3 (D. Del. Dec. 10, 2002); Gen-Probe, Inc. v. Vysis, Inc., No. 99-CV-2668 H, 2002 U.S. Dist. LEXIS 25020, at *117 (S.D. Cal. Aug. 2, 2002). 14. Intuitive Surgical,2002 WL 31833867, at *5 n.4. GONZAGA LAW REVIEW [Vol. 40:1 This comment identifies and analyzes inconsistencies found in the application of laches by the district courts since Symbol Technologies. By then analyzing other Federal Circuit and U.S. Supreme Court precedent, the comment will finally propose a clear and definitive prosecution laches test. Part II describes the patent
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