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Patent Prosecution Laches

One of the offshore patent analysis engineering teams I teach just heard about the defense of patent prosecution laches for the first time.  It was listed as an issue in a deliverable list proposed by the US lawyers they serve.  I thought it was interesting that the Federal Circuit would release the below decision at about the same time, so I have provided a few excerpts from the case below.     

In Cancer Research v. Barr Labs, the district court held that “the delay caused by eleven continuation applications, ten abandonments, and no substantive prosecution for nearly a decade was unreasonable and a sufficiently egregious misuse of the patent system to bar enforcement of the ’291 patent for prosecution laches.”  Page 6. 

The Federal Circuit reversed because the accused infringer has “failed to establish … [that anyone] developed or invested in [the claimed technology] during the patentee “period of delay.” Page 14. 

“Prosecution laches is an equitable defense to a charge of patent infringement. The doctrine may render a patent unenforceable when it has issued only after an unreasonable and unexplained delay in prosecution that constitutes an egregious misuse of the statutory patent system under the totality of the circumstances.”  Page 7. 

“Two elements underlie the defense of laches: (a) the patentee’s delay in bringing suit was unreasonable and inexcusable, and (b) the alleged infringer suffered material prejudice attributable to the delay.”  Page 9.  To “establish prejudice an accused infringer must show evidence of intervening rights, i.e., that either the accused infringer or others invested in, worked on, or used the claimed technology during the period of delay.”  Page 9. 

In this case, since the evidence presented does not show that the accused infringer or others worked on the technology until “thirteen years after the issuance” of the patent, there is no evidence of prejudice caused by the delay.  Page 13.  Since no prejudice was shown, the court did not consider whether or not the delay was unreasonable and inexcusable.

Dan Bell,  (Contact me.)

Do not disclose confidential information to me.  This is not legal advice or opinion.  This does not represent the current state of the law and does not include all issues relevant to this topic.  Do not take any action based upon this information without discussing the facts of your case with your lawyer.  I hereby refuse to be your lawyer.   I am only teaching now.  Copyrights © 2010 Dan Bell

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