Petition for Writ of Certiorari — Lemelson Medical, Education & Research Foundation v. Symbol Technologies

No.2 11855 WN 1 62002

‘ P THE K

OFFICE OF It Vern

IN THE

Supreme Court of the United States

LEMELSON MEDICAL, EDUCATION & RESEARCH

FOUNDATION, LIMITED PARTNERSHIP

Petitioner,

2

SYMBOL TECHNOLOGIES, ef ai..

Respondents.

Petition for a Writ of Certiorari to the

United States Court of Appeals

for the Federal Circuit

PETITION FOR A WRIT OF CERTIORARI

SCOTT L. NELSON H. BARTOW FARR, III

1600 20th Street, NW Counsel of Record

Washington, DC 20009 RICHARD G. TARANTO

(202) 588-7724 FARR & TARANTO

1220 19th Street, NW

LOUIS J. HOFFMAN

LOUIS J. HOFFMAN, P.C

14614 N. Kierland Blvd.

Suite 800

Washington, DC 20036

(202) 775-0184

Suite 300

Scottsdale, AZ 85254 GERALD D. HOSIER

(480) 948-3295 LAW OFFICES OF

GERALD D. HOSIER

8904 Canyon Springs Drive

Las Vegas, NV 89117

(702) 256-8904

a i ae

WILSON-EPES PRINTING CO., INC. — (202) 789-0096 - WASHINGTON. D.C. 20001

QUESTIONS PRESENTED

1. Whether a federal court may adopt a doctrine of

“prosecution laches” to shorten the time period expressly

allowed by the Patent Act, 35 U.S.C. § 120, for filing patent

applications.

2. Whether a federal court of appeals may refuse to follow

a controlling rule of law, applied to similarly situated litigants

in prior decisions, on the sole ground that the earlier decisions

were unpublished.

(1)

PARTIES TO THE PROCEEDING

Petitioner Lemelson Medical, Education & Research Foun-

dation, Limited Partnership was the appellee in the court of

appeals. The appellants were Symbol Technologies, Inc.,

Accu-Sort Systems, Inc., Intermec Technologies Corpora-

tion, Metrologic Instruments, Inc., PSC Inc., Teklogix

Corporation, Zebra Technologies Corporation, and Cognex

Corporation.

TABLE OF CONTENTS

Page

QUESTIONS PRESENTED... cccccccccssssssscs i

PARTIES TO THE PROCEEDING... il

TABLE OF AUTHORITIES 0.0000... iv

PENTONS BELOW

ie nt

STATUTORY PROVISIONS INVOLVED... 2

PPA T MONT o<csesecscnesisssessessovennessasenessneasrensicce, 2

A. Statutory Framework.......cccccccecccsseseeeoeeoecee 3

Be This Litigation... eccsssssssessseeseeeeeeececccc 5

REASONS FOR GRANTING THE WRIT... 8

1. THE FEDERAL CIRCUIT IMPROPERLY

CIRCUMSCRIBED THE TIME PERIOD

ALLOWED BY THE PATENT ACT FOR

FILING CONTINUATION AND __DIVI-

SIONAL APPLICATIONS o.oo 12

ll. BY DECLINING To CONSIDER ITS PRIOR

UNPUBLISHED DECISIONS, THE FED.

ERAL CIRCUIT VIOLATED THE FUNDA-

MENTAL PRINCIPLE THAT SIMILARLY

SITUATED LITIGANTS ARE TO BE

TREATED THE SAME uw. 26

ii ni Te 29

(111)

iV

TABLE OF AUTHORITIES

CASES Page

A.C. Aukerman Co. v. R.L. Chaides Constr. Co..,

960 F.2d 1020 (Fed. Cir. 1992)...............ccccceeeeee 19

Anastasoff v. United States, 223 F.3d 898, va-

cated as moot, 235 F.3d 1054 (8th Cir.

ITT acinncanctasosuitnetsnhandesssiasosintimstnanheunssiniin 7, 11, 27, 28

BMW of North America, Inc. v. Gore, 517 U.S.

FF CD icicsuscnatacicttiiinnnntiniamannniehastintniianiniaiams 26

Barnhart v. Sigmon Coal Co., Inc., 122 S. Ct.

OE Ce sicsicieresesntinemniess siciiiaaipisbshiieiaintanenaacsante: 12

Bott v. Four Star Corp., 1988 WL 54107 (Fed.

Seite, BPTI crntnssinsiicticcinnesnncasessnbassinseouniniacaniiniia a5 80, amar

Browder v. Dept. of Corrections of Illinois, 434

CF. Farr Ci cinienccsthinrcstincininimintandiapinsinen 28

Chapman y. Wintroath, 252 U.S. 126 (1920)........ 16

Crown Cork & Seal Co. v. Ferdinand Gutmann

Co, SOAS, CPC ctctinttininniccns OTF

Davis v. Michigan Dept. of Treasury, 489 U.S.

Re CID acinsisnnsinsansitintgneneeniienenitenenstannnstbeneniaannes 20

Festo Corp. v. Shoketsu. Kinzoku Kogy

Kabushiki Co., Lid. 122 S. Ct. 1831

EAI en cesnsinnseconissdinseesspnneeisiieiaieienigindapnaiassinimenents 10, 14, 23

Ford Motor Co. v. Lemelson, 42 U.S.P.Q. 2d

FR FD eeccnsiccncicitisinniienstnneennisicaniaietioniesnasiiiiinin 5,6

General Talking Pictures Corp. v. Western

Electric Co., 304 U.S. 175 (1938) ................0000 6, 17

Godfrey v. Eames, 68 U.S. (1 Wall.) 317

CRI sisscssssddichinasiiceisdensinnsetetnnianiteampenietindaiiemiveiaciin 9, 13,21

Harper v. Virginia Dept. of Taxation, 509 U.S.

A CaP ceninscicssintnsicnseniaiinasennsntionneintonbenetinitatdansees 11,26

Hart v. Massanari, 266 F.3d 1155 (9th Cir.

BINT b ccvinsisinssnsiteniseiataiianemsiumpiasaantmnnmaandiaian ay 8h oho

In re Bauman, 683 F.2d 405 (CCPA 1982)........... 3, 22

Vv

TABLE OF AUTHORITIES—Continued

Page

In re Hogan, 559 F.2d 595 (CCPA SEF Wisisasiighens 11,22

James B. Beam Distilling Co. vy. Georgia, 501

Es FAP CE encinsbieicie es oe) 11, 26

Kingsdown Medical C onsultants, Ltd. v. Hollis-

ter, Inc., 863 F.2d 867 (Fed. Cir. ge) 25

Mohasco Corp. v. Silver, 447 U.S. 807 (1980)... 24

Multiform Desiccants, Inc. y. Medzam, Ltd., 133

F.3d 1473 (Fed. Cir. 1998)... ccccccccccescscosseess.... 25

Muncie Gear Works, Inc. v. Outboard Machine

& Mfg. Co., 315 U.S. 759 (1942) .occccccccccoeeos..... 17

Overland Motor Co. v. Packard Motor Car Co.,

£P4 UB. 417 CIGD) cc csiciicdinterc 10, 14, 15

Pratt & Whitney Co. v. United States, 345 F.2d

i |. | RIC ne ek te ne 17

Racing Strollers, Inc. v. TRI Industries, Inc., 878

F.2d 1418 (Fed. Cir. 1989)... ..cccccccscccsscoeceseecs... fi, ae

Railroad Dynamics, Inc. v. A. Stucki C 0., 727

F.2d 1506 (Fed. Cir. 1984)... ccccccccccscceccoeeoseee.... 18

Ricoh Co. v. Nashua Corp., 1999 WL 88969

PE Oe, TI ii ce eee yh Be Be

Studiengesellschaft Kohle mbH y. Northern

Petrochemical Co., 784 F.2d 351 (Fed. Cir.

FP) sitinencannneniinintasdmiaeiis ee eee

il

vi

TABLE OF AUTHORITIES—Continued

Page

Webster Electric Co. v. Splitdorf Electrical Co..,

SOE UE. SED (OP ecesnsiintniintcntensuiinniinsdiiictiaaaiinia passim

Westphal v. Fawzi, 666 F.2d 575 (CCPA 1981)... 18

Williams v. Dallas Area Rapid Transit, 256 F.3d

yo of. le > | ee 27, 28

Wirebounds Patents Co. v. Saranac Automatic

Machine Corp., 65 F.2d 904 (6th Cir. 1933)..... 17

Woodbridge v. United States, 263 U.S. 50 (1923). passim

STATUTES

Act of August 5, 1939, ch. 452, § 1, 53 Stat.

BBS Dcccccscsecsschecastiienbocnsecbesutedisiammsaniaiaannnnnann 18

BO U ails: B CGE ccttiticnenciscnisimiaien l

TS USAC. © GERI ccecnccisecccisintaadeeaannenine 12

DF BU Fissstccescctececssaiesveditebentaananealianaie 3

Ry 5 | a ees 3,24

OD Tai cecsnssscconcscideiieeunneiiieaienanenaanale passim

Dy a nae ee. 5 passim

i I 4, 18, 19, 20

Of) a ee ate passim

} ddidicinscacititansencesidciaeseuniouaiensamaaaae 5, 13, 21

© Diiiscecuntsncteninitiaienseaaadnaadaaniaa saan 19

CONGRESSIONAL MATERIALS

Court of Patent Appeals and Limiting Patents to

20 Years, Hearings on S. 2687 and S. 2688

before the Senate Comm. on Patents, 76th

Cong... 1st Fans. (RSDP cccrecisensstitinmnsinnntonsincintinin 20

Patents Legislation, Hearings on H.R. 359, H.R.

632, H.R. 1732 and H.R. 1733 Before the

Subcomm. on Courts and Intellectual Property,

104th Cong., 1st Sess. (1995S) .........cc...ccsccccssesees 21

Vii

TABLE OF AUTHORIT [ES—Continued

Page

Recording Patent Agreements and Limiting

Patents to 20 Years. Hearings on H.R. 2630.

2631, and 2632 Before the House Comm. on

Patents, 79h Cong., Ist Sess. (1945)... 20

OTHER MATERIALS

POG, CO, BR, TMD) ecasccccnnsnsossezsnseseneecnesseses........ 23

U.S. Patent & Trademark Office, Manual of

Patent Examining Procedures § 201.06 (3d ed.

3

TOW, Oa enigrcsicestniesidistuininabeninisincinieiin ee ti.

D. Chisum, Patents

$ 10.09[4 ][C]fi} (2002) ooo eeeccccccccsceeecseeeeecce.. 4

$ 11205 [1] [b) (1996) occ 7,17

LL ae 3

ed = | nn ce ar 3

De etiitbedeta 4,13

Administrative Office of the US. Courts,

Judicial Business of the United States Courts.

2001 Annual Report Of the Director .................. 28

A. Deller, Walker on Patents (1937)... 18

Practice and Process 287 (2001)................. 28

I. Kayton, Patent Practice (6th ed., Rel. No. 3,

ices Lo ASSES. SO 18

Koffs, The Legal Intelligencer (Feb. 7, 2002)....... 24

Vill

TABLE OF AUTHORITIES—Continued

Page

Robel, The Practice of Precedent: Anastasoff,

Noncitation Rules, and the Meaning of Prece-

dent in an Interpretive Community, 35 Ind. a

Rev. 399 (2002) ....cccccccccccccsescceceeeeeeseeeeneeeeeenennees 28

B. Stedman, Patents (1939) .......cccccceceeeeeeeereeeeeneees

IN THE

Supreme Court of the United States

No. 02-

LEMELSON MEDICAL, EDUCATION & RESEARCH

FOUNDATION, LIMITED PARTNERSHIP

Petitioner.

Va

SYMBOL TECHNOLOGIES, et al.,

Respondents.

Petition for a Writ of Certiorari to the

United States-Court of Appeals

for the Federal Circuit

PETITION FOR A WRIT OF CERTIORARI

Petitioner Lemelson Medical, Education & Research

Foundation, Limited Partnership (“Lemelson”) respectfully

petitions for a writ of certiorari to review the judgment of the

United States Court of Appeals for the Federal Circuit in

this case.

OPINIONS BELOW

The opinion of the court of appeals (Pet. App. la-19a) is

reported at 277 F.3d 1361. The opinion of the United States

District Court for the District of Nevada (Pet. App. 20a-31a)

is unreported.

JURISDICTION

The judgment of the court of appeals was entered on

January 24, 2002. A timely petition for rehearing was denied

on March 20, 2002. Pet. App. 32a-33a. The jurisdiction of

this Court is invoked under 28 U.S.C. § 1254(1).

2

STATUTORY PROVISIONS INVOLVED

Section 120 of Title 35 of the United States Code provides, in

part, as follows:

“An application for patent for an invention disclosed in

the manner provided by the first paragraph of section

112 of this title in an application previously filed in the

United States, or as provided by section 363 of this title,

which is filed by an inventor or inventors named in the

previously filed application shall have the same effect,

as to such invention, as though filed on the date of the

prior application, if filed before the patenting or

abandonment of or termination of proceedings on the

first application or on an application similarly entitled to

the benefit of the filing date of the first application and if

it contains or is amended to contain a specific reference

to the earlier filed application.”

Section 121 of Title 35 of the United States Code provides, in

part, as follows:

“If two or more independent and distinct inventions are

claimed in one application, the Director may require the

application to be restricted to one of the inventions. If

the other invention is made the subject of a divisional

application which complies with the requirements of

section 120 of this title it shall be entitled to the benefit

of the filing date of the original application.”

STATEMENT

This case involves a claim by respondents that the federal

courts should recognize and apply a non-statutory defense of

“prosecution laches” to bar enforcement of patents held by

petitioner. The district court dismissed the claim, stating that

the terms of the federal Patent Act were controlling. The

court of appeals reversed. Finding a doctrine of prosecution

laches in two cases decided by this Court, Woodbridge v.

3

United States, 263 U.S. 50 (1923); Webster Electric Co. v.

Splitdorf Electrical Co., 264 U.S. 463 (1924), it held that the

patents could be held unenforceable “even though the

applicant complied with pertinent statutes and rules.”

Pet. App. 4a.

A. Statutory Framework. The question in this case is

straightforward: when must a patent applicant file a

continuation or divisional application in order to get the full

benefit of the filing date of an earlier application? | Section

120 of the Patent Act is the statutory provision addressed to

that question. See 35 U.S.C. § 120. As a substantive matter,

to assure that the new application is properly grounded in the

old, Section 120 requires that the continuation application

seek a patent “for an invention disclosed in the manner

provided by the first paragraph of section 112 of this title in

an application previously filed in the United States” by the

same inventor. /d.? Then, on the issue of timing, Section 120

' “A continuation application is a second application which contains

the same disclosure as the original application.” 4 Chisum on Patents

§ 13.03[2] at 13-12 (1995). “A division or divisional application is ‘a

later application for a distinct or independent invention, carved out of a

pending application and disclosing and claiming only subject matter

disclosed in the earlier or parent application.”” Jd. § 13.03[4] at 13-17

(1991), quoting U.S. Patent & Trademark Office, Manual of Patent

Examining Procedure § 201.06 (3d ed. rev. 1974). As these definitions

indicate, patent applicants are not required to claim immediately all of the

inventions that may be described in an initial patent application. They

may add claims later through continuation and divisional applications, and

under circumstances discussed in the text, those claims will be treated as

if filed on the date of the earlier application. See In re Bauman, 683 F.2d

405, 408 (CCPA 1982).

? The first paragraph of Section 112 requires, among other things, “a

written description of the invention, and the manner and process of

making and using it” in such terms that a person skilled in the art can

“make and use the same.” 35 U.S.C. § 1124 1. Importantly, Section 120

does not require compliance with paragraph two of § 112, which relates

4

expressly states that the continuation application must be filed

“before the patenting or abandonment of or termination of

proceedings on the first application or on an application

similarly entitled to the benefit of the filing date of the first

application... .” /d. If those conditions are met, and a

proper reference to the predecessor application has been

made, id., the statute declares that a continuation application

“shall have the same effect, as to such invention, as though

filed on the date of the prior application... .” /d.

Section 121 of the Act governs the filing of divisional

applications. See 35 U.S.C. § 121. Rather than providing

separate standards, Section 121 simply says that, to be treated

as part of one continuous application with an earlier filing, a

divisional application must “compl[y] with the requirements

of section 120 of this title... .” /d. If it does, Section 121

states that the divisional application “shall be entitled to the

benefit of the filing date of the original application.” /d.

There is one statutory exception to the principle that

compliance with Section 120 entitles a patent applicant to the

full benefit of the filing date of an earlier application. Section

135(b) specifies that a patent applicant has a period of only

one year from the issuance of a patent to another inventor to

make a claim “which is the same as, or for the same or

substantially the same subject matter as, the claim of [the]

issued patent... .” 35 U.S.C. § 135(b).’ As a result, even

though an inventor makes the claim in a continuation or

divisional application that is otherwise entitled to the filing

date of a parent application, the applicant will be denied a

to the presentation of claims. See 4 Chisum on Patents § 13.04 at

13-21 (1991).

* The copying of a claim from ai issued patent provokes an

interference, which is an administrative proceeding “to determine priority

between two parties claiming the same invention.” 3 Chisum on Patents §

10.09[4][c][i] at 10-389 (2002).

5

patent unless he presents the claim within a year after

issuance of a patent to another inventor.

The Patent Act also contains provisions that address the

filing of claims when one part of the time requirement of

Section 120—that the claims be made before patenting on the

predecessor application—has not been met. In that situation,

Section 251 of the Act provides that the patent applicant may

seek a reissuance of his patent. See 35 U.S.C. § 251. This

procedure involves cancellation of the original patent and

issuance of a new patent that includes the additional claims.

The Act expressly states that, to expand the scope of claims, a

patentee must apply for reissue within two years. /d.

Moreover, unlike Section 120, Section 252 provides that a

reissued patent is subject to certain preexisting adverse rights.

See 35 U.S.C. § 252.

B. This Litigation. This case arises out of several actions

commenced by respondents, seeking declaratory judgments

that patents assigned to petitioner are invalid, unenforceable,

or not infringed by respondents or users of their products.

The patents, issued to inventor Jerome Lemelson, claim

pioneering inventions in bar-code scanning and “machine

vision.” Pet. App. 2la-22a. The patents, which issued

between 1978 and 1994, trace their origins through contin-

uation, continuation-in-part, and divisional applications to

parent applications filed in 1954 and 1956. Respondents

claim, among other things, that even if Mr. Lemelson

complied with all relevant statutory provisions and rules,

including the filing requirements of Sections 120 and 121,

the patents should be held unenforceable because of what

respondents have termed “prosecution laches.”

The district court dismissed the laches claim. Pet. App.

29a-30a. In so doing, the court relied upon an earlier decision

of the same district court, involving the same inventor. See

Ford Motor Co. v. Lemelson, 42 U.S.P.Q. 2d 1706 (1997).

The court in Ford Motor had held that the time limits for

6

filing continuation and divisional applications were governed

by the terms of the Act, saying that while “Lemelson’s use of

the continuation applications process may have exploited an

open area of patent practice, the court should not intervene in

equity to regulate what Congress has not.” /d. at 1707,

quoted at Pet. App. 30a. Following that reasoning, the district

court below concluded that, regardless of the policy

arguments made by respondents, it was “improper to

introduce the equitable doctrine of laches into the statutory

scheme of continuation practice.” Pet. App. 30a.

The Federal Circuit reversed. The court of appeals began

by stating that “the sole issue . . . is Whether, as a matter of

law, the equitable doctrine of laches may be applied to bar

enforcement of patent claims that issued after an

unreasonable and unexplained delay in prosecution even

though the applicant complied with pertinent statutes and

rules.” Pet. App. 4a. The court then answered that question

in the affirmative.

The Federal Circuit rested its conclusion almost entirely on

two cases decided by this Court. See Woodbridge v. United

States, 263 U.S. 50 (1923); Webster Electric Co. v. Splitdorf

Electrical Co., 264 U.S. 463 (1924). According to the court

of appeals, those cases established a broad “defense of

prosecution laches,” Pet. App. Sa, which imposed extra-

statutory limitations on claims made in continuation and

divisional applications. The “prosecution laches” doctrine

thus provided “a defense to an infringement action involving

new claims issuing from divisional and continuing

applications that prejudice intervening adverse public rights.”

Pet. App. 6a, citing Crown Corl & Seal Co. v. Ferdinand

Gutmann Co., 304 U.S. 159 (1938); General Talking Pictures

Corp. v. Western Electric Co., 304 U.S. 175 (1938). In

recognizing this doctrine, the Federal Circuit rejected the

view, taken by a leading commentator on patent law, that the

only laches doctrine established in Webster was a doctrine—

7

now incorporated in Section 135(b)}—limiting the time to

make claims copied from or substantially the same as claims

in a patent issued to another inventor. Pet. App. 7a; see 4

Chisum on Patents §11.05{1]}[b] at 11-264 (1996).

The court of appeals then turned to the Patent Act itself.

Quoting portions of Sections 120 and 121—but omitting the

language of Section 120 setting the time for filing appli-

cations at “before the patenting or abandonment of or

termination of proceedings on” a prior application (35 U.S.C.

§ 120)—the court observed that “[t]hese sections provide the

backbone for the modern continuation and division practice.”

Pet. App. 8a. The court found, however, that “the legislative

history and commentary from the authors of the 1952 Act

suggest no . . . intent” to “abrogate[] the defense of

prosecution laches” derived from Woodbridge and Webster.

Pet. App. 8a. Relying in particular on a reference to “laches”

in commentary on Section 282 of the Act—which provides

for various defenses in infringement actions—the court

stated: “To the contrary, a careful reading of the history and

commentary on the 1952 Act shows an intent to maintain the

defense.” Pet. App. 9a.

Finally, the court refused to follow two unpublished

Federal Circuit opinions, both of which had flatly rejected the

doctrine of prosecution laches. See Ricoh Co. v. Nashua

Corp., 1999 WL 88969 (Fed. Cir. Feb. 18, 1999); Bott v.

Four Star Corp., 1988 WL 54107 (Fed. Cir. May 26, 1988).

Although it noted a holding by the Eighth Circuit that Article

III required federal courts to treat all opinions, even

unpublished ones, as precedential, see Anastasoff v. United

States, 223 F.3d 898, vacated as moot, 235 F.3d at 1054 (8th

Cir. 2000) (en banc), it found more persuasive the contrary

view taken by the Ninth Circuit. See Pet. App. 10a, citing

Hart v. Massanari, 266 F.3d 1155 (9th Cir. 2001). The court

of appeals stated that “ideally once a principle has been

established, it is up to the courts thereafter to apply it in cases

coming before them and at most to explain their decisions to

the parties, not to add to the explosion of legal opinions.”

Pet. App. 13a.

Judge Newman dissented. Criticizing the decision to

“creat[e] a new equitable cause of action called ‘prosecution

laches,” Pet. App. 14a, Judge Newman noted that “[t)}he

long-standing rule, until today, is that when the statutory

requirements for continuing applications are met, patents are

not subject to attack on non-statutory grounds.” Pet. App.

14a. Then, with respect to the opinions of this Court relied on

by the majority, she noted that neither Woodbridge nor

Webster had established what the majority said that they did:

Woodbridge involved a patent applicant who had violated

express statutory requirements and thus “lost his statutory

right to the patent,” Pet. App. 15a, and Webster involved

delay in presenting “claims covering subject matter in an

adverse patent.” Pet. App. 15a.

Judge Newman further pointed out that Congress, in

enacting the requirements for continuation applications, had

“chose[n] not to place time limits on their use, beyond those

placed by the statute.” Pet. App. 15a. Observing that “(t}he

issue now before us has been considered in various legislative

proposals and rejected,” Pet. App. 19a, she said that “[iJt is

inappropriate for this court, under the guise of equity, to

change the law and adopt the position that was rejected by the

Congress.” Pet. App. 19a. She concluded: “We should lay to

rest this new source of uncertainty and variability in

continuation practices, lest we insert a taint into every patent

that has invoked these statutory procedures.” Pet. App. 19a.

The Federal Circuit denied a petition for rehearing en banc

by a vote of 4 to 3, with 5 judges not participating.

REASONS FOR GRANTING THE WRIT

This case involves an issue of exceptional importance in

federal patent law: whether the federal courts may adopt a

9

doctrine of “prosecution laches” to limit the rights of patent

holders who obtained their patents by filing continuation or

divisional applications. For five decades Section 120 of the

federal Patent Act has provided that patent applicants, having

fully described and disclosed an invention in a patent

application, may later claim that invention with the benefit of

the earlier filing date, so long as the claim is made before a

patent issued (or certain other action was taken) on the prior

application. See 35 U.S.C. § 120. This statutory right reflects

a long-standing judicial doctrine, recognized by this Court,

that simultaneously pending patent applications—relying on a

common disclosure—are treated not as separate requests for

patent issuance but rather as part of one continuous

application that bears the date of the original. See Godfrey v.

Eames, 68 U.S. (1 Wall.) 317 (1864). In this case, however,

the Federal Circuit set this established principle aside,

holding that a patent applicant meeting all the requirements of

Section 120 may nonetheless be told that his patent is

unenforceable. Purporting to rely on two cases decided by

this Court in the 1920's, Woodbridge v. United States, 263

U.S. 50 (1923); and Webster Electric Co. v. Splitdorf

Electrical Co., 264 U.S. 463 (1924), the Court announced that

it would henceforth apply a doctrine of “prosecution laches”

to invalidate patents not sought within an undefined

“reasonable” time. Pet. App. 5a-10a.

This extraordinary decision warrants review for several

reasons. To begin with, as Judge Newman pointed out in

dissent below, the suddenly discovered doctrine of

“prosecution laches” introduces a “new source of uncertainty

and variability in continuation practice” that potentially

“insert[s] a taint into every patent that has invoked these

statutory procedures.” Pet. App. 19a. Most obviously, this

retroactive filing requirement disrupts the legitimate

expectations of patent applicants who have relied on the

terms of the governing statutory provisions, as well as on

numerous judicial decisions declaring those terms to be

10

controlling. By abruptly repudiating “the long-standing rule,”

Pet. App. 14a (Newman, J., dissenting), the Federal Circuit

showed little of the caution needed “before adopting changes

that disrupt the settled expectations of the inventing

community.” Festo Corp. v. Shoketsu. Kinzoku Kogyo

Kabushiki Co., Ltd., 122 S. Ct. 1831, 1841 (2002). Further-

more, the decision below will necessarily involve patent

litigants in a wholly new, and likely ubiquitous, series of

collateral disputes, all turning on drawn-out arguments about

whether actions before the Patent and Trademark Office were

taken within a reasonable time and on who must bear the

blame for each period of delay.

The decision below is also wrong, both in approach and in

result. Before deciding to shorten a time requirement

expressly set forth in a federal statute, a federal court, at a

minimum, should assure that Congress did not intend for

applicants to be able to utilize the full time period. See

Overland Motor Co. v. Packard Motor Car Co., 274 US.

417, 424 (1927). Here, however, the Federal Circuit paid

little attention to. the express terms of the Act, instead

choosing to fashion its doctrine. of “prosecution laches”

almost entirely out of two little-known decisions of this

Court, neither of which comes close to establishing a general

timeliness requirement for all patent applicants. Moreover,

the court of appeals totally ignored the fact that Congress, in

balancing various competing interests in the Patent Act, has

consistently resisted efforts to set additional restrictions on

‘continuation and divisional applications.” This one-sided

analysis is especially startling in light of the fact that the

Federal Circuit, and its predecessor court as well, have

4 As we discuss, see pages 21-22 infra, Congress did make significant

changes to the Act in 1994—most notably, dating patent rights from the

time of original application—but it did not impose retroactive limitations

that would deny rights to patent holders and applicants who had relied on

the preexisting system.

1]

repeatedly told patent applicants that they need only meet the

requirements of Section 120 in order to obtain the benefits of

a single continuous application. See, e.g., Transco Products,

Inc. v. Performance Contracting, Inc., 38 F.3d 551 (Fed. Cir.

1994); Racing Strollers, Inc. v. TRI Industries, Inc., 878 F.2d

1418 (Fed. Cir. 1989) (en banc); In re Hogan, 559 F.2d 595

(CCPA 1977); Bott v. Four Star Corp., 1988 WL 54107 (Fed.

Cir. 1988) (unpublished); Ricoh Co. v. Nashua Corp., 1999

WL 88969 (Fed. Cir. 1999) (unpublished). The doctrine thus

represents the starkest kind of judicial lawmaking.

The process by which the Federal Circuit reached its

decision—refusing to consider its own directly applicable

unpublished decisions as precedent—also warrants review.

The federal courts of appeals have disagreed over the

constitutionality of disregarding unpublished opinions,

compare Anastasoff v. United States, 223 F.3d 898, vacated

as moot, 235 F.3d 1054 (8th Cir. 2000) (en banc), with Hart

v. Massanari, 266 F.3d 1155 (9th Cir. 2001), and the question

is of widespread significance: more than four-fifths of all

opinions issued by federal courts of appeals are unpublished.

While there is no active conflict among the circuits, the

reasoning of the Eighth Circuit opinion in Anastasoff, taken

on its own merits, makes a strong case for the proposition that

the practice of disregarding prior decisions is incompatible

with the principle “that litigants in similar situations should

be treated the same, a fundamental component of stare decisis

and the rule of law generally.” James B. Beam Distilling Co.

v. Georgia, 501 U.S. 529, 537 (1991) (opinion of Souter, J.);

see id. at 547 (Blackmun, J., concurring in the judgment); see

also Harper v. Virginia Dept. of Taxation, 509 U.S. 86

(1993). The Court should resolve this important question

as well. |

12

I. THE FEDERAL CIRCUIT IMPROPERLY

CIRCUMSCRIBED THE TIME PERIOD

ALLOWED BY THE PATENT ACT FOR

FILING CONTINUATION AND DIVISIONAL

APPLICATIONS

A. We begin, as the Federal Circuit did not, with the

governing statute. See Barnhart v. Sigmon Coal Co., Inc.,

122 S. Ct. 941, 950 (2002) (“As in all statutory construction

cases, we begin with the language of the statute”). Sections

120 and 121, both part of the Patent Act since 1952, set forth

the conditions under which continuation and divisional

applications are treated just as though they had been filed at

the time of an earlier parent application.” In basic terms—

leaving out, for a moment, the language addressing the time at

which the later applications must be filed—Section 120

provides that “[aJn application for patent for an invention

disclosed in the manner provided by the first paragraph of

section 112 of this title in an application previously filed in

the United States . . . [by the same inventor] shall have the

same effect, as to such invention, as though filed on the date

of the prior application... .” 35 U.S.C. § 120 (emphasis

added). Section 121, in turn, states that “a divisional

application which complies with the requirements of section

120 of this title . . . shall be entitled to the benefit of the filing

date of the original application.” 35 U.S.C. § 121 (emphasis

added). This fundamental requirement, that any newly

claimed invention have been disclosed in a prior application,

* The effective filing date granted to an application, and to the claims

that it contains, can have important consequences in the patenting process.

For example, the effective filing date may be determinative on the

issue whether the patent applicant has satisfied the terms of Section

102(b) of the Act, 35 U.S.C. § 102(b), which bars issuance of a patent

when “the invention was patented or described in a printed publication in

this or a foreign country or in public use or on sale in this country, more

than one year prior to the date of the application for patent in the United

States.” /d.

13

assures that the inventor is staying within the scope of the

earlier application, making claims only with respect to

inventions that he has previously described. See generally 4

Chisum on Patents § 13.04 at 13-21-13-24 (1991).

Section 120 does more, however, than simply require

proper grounding of the claims in a parent application: it

expressly addresses when a continuation or divisional

application must be filed in order to “have the same effect . . .

as though filed on the date of the prior application... .

35 U.S.C. § 120; see also 35 U.S.C. § 121 (“shall be entitled

to the benefit of the filing date of the original application”).

In clear language that the Federal Circuit did not even

mention—indeed, language that it deleted from its quotation

of the statute, see Pet. App. 8a—Section 120 specifies that the

application must be “filed before the patenting or

abandonment of or termination of proceedings on the first

application or on an application similarly entitled to the

benefit of the filing date of the first application... .” 35

U.S.C. § 120 (emphasis added). This statutorily defined time

limit, known generally as the co-pendency requirement,

embodies the core principle supporting continuation and

divisional applications: that, when they overlap in time with

an earlier application (and meet the necessary disclosure

obligation), they are regarded as part of a single continuous

application, not as separate applications. As this Court stated

long before the enactment of Section 120, “the two petitions

are to be considered as parts of the same transaction, and both

as constituting one continuous application, within the

meaning of the law.” Godfrey v. Eames, 68 U.S. (1 Wall.)

317, 326 (1864).°

° By contrast, if a patent applicant seeks to add claims after a patent has

been issued on the parent application, the continuity of application has

been broken, and he must seek a reissued patent under a much stricter

provision. See 35 U.S.C. §§ 251-52; page 5 supra.

14

There is no doubt that Mr. Lemelson met the statutory

deadline. The Federal Circuit did not find, and respondents

do not even allege, that Lemelson failed to file his

applications “before the patenting or abandonment of or

termination of proceedings on” an earlier application. The

patents issued on those applications should thus be fully

enforceable under the terms of Section 120 unless the federal

courts have a license to modify those terms. But this Court

has previously struck down judicial efforts to circumscribe

time limits in the Patent Act, stating: “A party seeking a right

under the patent statutes may avail himself of all their

provisions, and the courts may not deny him the benefit of a

single one. These are questions, not of natural, but of purely

statutory, right.” United States v. American Bell Telephone

Co., 167 U.S. 224, 247 (1897). Even more particularly, the

Court has disapproved of efforts to shorten time periods in the

Act by invoking equitable concepts like laches: “The answer

to this argument [i.e. that applicants can obtain unfair

advantages by utilizing the full statutory period] is that the

matter is entirely within the control of Congress .... We do

not know on what principle we could apply the equitable

doctrine of abandonment by laches in a case where the

measure of reasonable promptness is fixed by statute ....

Overland Motor Co., 274 U.S. at 423-24 (emphasis added).

Those principles are, in fact, critical to a proper functioning

of the patent system. Inventors seeking patents for their

inventions must be able to rely on the time periods permitted

by the Act itself, without concern that federal courts will later

impose retroactive limits to curtail valuable patent rights. See

Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd.,

122 S. Ct. at 1841 (“{f]undamental alterations in [settled]

rules risk destroying the legitimate expectations of inventors

in their property”). Thus, when a statutory provision itself

sets “the measure of reasonable promptness” for filing patent

applications, a federal court should not truncate the specified

time period without, at the very least, a clear indication that

15

Congress did not intend to allow inventors to utilize the

full period. As we discuss next, that evidence is utterly

lacking here.

B. The decision of the Federal Circuit rests almost

completely on two decisions of this Court handed down in the

1920s. See Woodbridge v. United States, supra; Webster

Electric Co. v. Splitdorf Electrical Co., supra. According to

the court below, those cases announced and applied a doctrine

of “prosecution laches,” which Congress implicitly incor-

porated into the statute in 1952. See Pet. App. 5a-10a.

Neither part of this theory is correct. The only laches

doctrine properly derived from the cited cases is a much

narrower doctrine limiting the time for making claims similar

to those in an issued patent, and Congress enacted that

doctrine—and only that doctrine—into the statute well before

1952. See page 18 and note 9 infra. Furthermore, the

legislative record shows that Congress repeatedly rejected

efforts to limit patent rights obtained by means of

continuation and divisional applications, instead treating

those applications as entitled to all the benefits of a single

continuous filing.

1. The decision in Woodbridge, which this Court itself has

called an “exceptional” case, Overland Motor Co., 274 U.S.

at 426, does little to support a broad equitable doctrine of

“prosecution laches.” Even leaving aside that the case arose

out of a unique statute passed by Congress to resolve a single

long-standing patent dispute—a statute that, by its terms,

called for a judicial inquiry into the possibility of “laches” by

the inventor (263 U.S. at 51)}—the result in Woodbridge, in

the end, turned on nothing more than the violation of an

express statutory time limit. Thus, while the Court engaged

in a wide-ranging discussion of abandonment, forfeiture,

laches, and other doctrines, it ultimately declared that the

applicant was not entitled to a patent for the simple reason

that his “plan of nonaction was not in accord with the rules of

16

procedure in the Patent Office, but was in plain violation of

the statutory law.” 263 U.S. at 63 (emphasis added). This

conclusion was as unsurprising as it was ordinary: the

applicant had delayed issuance of the patent by the Patent

Office for nine years when a statute allowed him te do so for

only one year. See 263 U.S. at 58. Woodbridge is thus, at

bottom, a decision about the need to observe statutory time

limits, not a decision about the right of the judiciary to

manufacture extra-statutory requirements.

The decision in Webster likewise neither declared, nor

applied, a broad doctrine of “prosecution laches.” Although

an early section in Webster described the lengthy history of

prosecution by the patentee, and concluded that it dem-

onstrated “laches” on his part, the Court conspicuously did

not say what particular part of the prosecution was

impermissably long. See 264 U.S. at 465-66. The answer to

that question was supplied by the next section, see 264 U.S. at

466-69, one totally disregarded by the Federal Circuit below.

There, this Court first drew, and then found dispositive, a

basic analogy between two kinds of delay: first, delay in

making applications for reissued patents and, second, delay in

making claims copied from (or substantially similar to) a

patent issued to another inventor. Then, based on the fact that

it had previously recognized a doctrine of laches with respect

to filing enlarged claims in reissued patents, the Court applied

the same presumptive two-year period to the filing of

continuation and divisional applications that, like the ones

under attack in Webster, made claims similar to those in a

previously issued patent. See 264 U.S. at 469; see also

Chapman v. Wintroath, 252 U.S. 126 (1920). The Court

observed: “While the analogy between the case of a reissue

patent and that of copying for interference is not always an

exact one, it is sufficiently so, as applied to the present case,

to make those decisions pertinent, and the principle which

they announce is controlling.” 264 U.S. at 469 (emphasis

added); see generally note 3 supra (defining an interference).

17

Later decisions (including decisions cited approvingly by this

Court) and leading patent authorities have generally

recognized that the decision in Webster is limited to that

particular context. See, e.g., 4 Chisum on Patents,

§ 11:05[1][b] at 11-264 (1996); Wirebounds Patents Co. v.

Saranac Automatic Machine Corp., 65 F.2d 904, 905-06 (6th

Cir. 1933), cited in Crown Cork & Seal Co. v. Ferdinand

Gutmann Co., 304 U.S. 159, 168 (1938); Wagenhorst v.

Hydraulic Steel Co., 27 F.2d 27, 28-29 (6th Cir. 1928), cited

in Crown Cork & Seal Co., 304 U.S. at 167. But see Pratt &

Whitney Co. v. United States, 345 F.2d 838, 843-44 (Ct. Cl.

1965) (adopting Commissioner’s report).

The cases relied on by the Federal Circuit thus provide no

footing for an open-ended doctrine of “prosecution laches.”

Nor has any such doctrine emerged from subsequent cases.

The decisions in Crown Cork & Seal and General Talking

Pictures Corp. v. Western Electric Co., 304 U.S. 175 (1938),

rejected laches defenses, leaving Justice Black, dissenting in

Crown Cork & Seal; to complain that the Court had done

away with the defense entirely. See 304 U.S. at 173-74

(Black, J., dissenting).’ And, while some patent experts

thought that the decision in Muncie Gear Works, Inc. v.

Outboard Machine & Mfg. Co., 315 U.S. 759 (1942), had.

established a laches doctrine known as “late claiming’”—

invalidating claims filed more than two years after adverse

public use, even if the subject matter had been fully disclosed

in an earlier application—that doctrine, too, has fallen by the

wayside. It has long been accepted, by the Federal Circuit in

particular, that Muncie Gear Works does not stand for any

” As noted in the previous paragraph, Crown Cork also cited with

approval several lower-court cases reading Webster as requiring

promptness in copying claims from another patent. Although language in

both Crown Cork and General Talking Pictures left open the possibility

that the Court might ultimately apply a broader doctrine of late claiming,

that doctrine, as we discuss in the text, never actually materialized.

18

limit on the claims presented in continuation and divisional

applications, but rather prohibits only the introduction of

“new matter” into the disclosure of such applications. See

Railroad Dynamics, Inc. v. A. Stucki Co., 727 F.2d 1506,

1517 (Fed. Cir. 1984) (rejecting argument based on “the

inappropriate and long ago discredited ‘late claiming’ label”);

Westphal v. Fawzi, 666 F.2d 575 (CCPA 1981). See also 3 I.

Kayton, Patent Practice 8.20-21 (6th ed., Rel. No. 3, 1998).

Taken as a whole, therefore, the historical record—as of 1952

and up to the present time—shows that, insofar as

continuation and divisional applications are concerned, this

Court has invalidated a patent on the basis of laches in only

one case, and it was a case (Webster) in which the crucial

delay at issue was a delay in making claims that were

substantially the same as claims in a previously issued patent.

The penalty for that delay has long since been addressed, in

explicit terms, in another provision of the Act. See Act of

August 5, 1939, ch. 452, § 1, 53 Stat. 1213, now codified at

35 U.S.C. § 135(b)."

2. It is just incorrect, therefore, to say that this Court long

ago created a broad doctrine of “prosecution laches” to limit

the filing of continuation and divisional applications. And, in

any event, there is certainly no reason to think that Congress

meant to incorporate that kind of doctrine into the Act,

8 Although the court of appeals stated that “the contemporary learned

treatises confirmed the existence of the prosecution laches defense,” Pet

App. 7a, that statement is flatly contradicted by the cited authorities.

According to A. Deller, Walker on Patents, the first of the cited treatises,

the holding in Webster was “that a delay of five years after the granting of

a patent to a rival claimant is fatal to the claims ....” Jd. § 183 at 869

(1937) (emphasis added). The treatise went on to note that “(t]he doctrine

of laches in copying claims has been applied by the Patent Office and the

Courts in many cases.” /d. (emphasis added). The other cited authority

likewise described Webster as “holding a delay of five years after the date

of an adverse patent to be unreasonable.” B. Stedman, Patents, § 111 at

255 (1939) (emphasis added).

19

without bothering to mention it, either in Section 120 itself or

in any other provision (for example, Section 282). As the

history of the Act shows, Congress is fully capable of

adopting—in the plainest of terms, not sub _ silentio—

particular judicially developed laches doctrines that it regards

as necessary or appropriate to the balance of interests struck

in the Act. Most notably, Congress expressly enacted the

“laches” period applicable to seeking reissued patents (35

U.S.C. § 251) and the “laches” period applicable to copying

claims from a patent (35 U.S.C. § 135(b)), both sides of the

“controlling” laches analogy in Webster.’ By comparison,

nothing on the face of Section 120 suggests any intention to

qualify the co-pendency filing requirement with some

unexpressed notion of “reasonable” promptness.

The effort to read “prosecution laches” inte-Section 282,

35 U.S.C. § 282, is equally unpersuasive. Although that

provision does allow for a defense of “laches,” it is laches of

a very different sort: delay in filing suit after knowledge of a

possible infringement. See A.C. Aukerman Co. v. RL.

Chaides Constr. Co., 960 F.2d 1020 (Fed. Cir. 1992). The

reference to “laches” in commentary on the 1952 Act, see Pet.

App. 9a, is most naturally read to refer to this traditional

defense, not to the (nonexistent) defense of “prosecution

laches.” Furthermore, a laches doctrine applied to the filing

of infringement suits does not contravene other sections of

the Aci. However useful a laches doctrine may be in filling

statutory gaps, it distorts the Act as a whole to use the highly

general terms of one section (Section 282) to cut short a filing

period specifically permitted in another section (Section 120).

* These two laches doctrines were developed by this Court, of course, at

a time when no statutory provision had anything to say about the timing of

applications for reissued patents or of continuation applications reading on

the claims of another patent. As we have noted, the “laches” period for

copying claims was included (and shortened) in 1939. The “laches” period

for reissued patents was included in the statute for the first time in 1952.

20

If that were permissible, it would lead to the implausible

conclusion that the Federal Circuit could also abbreviate the

_ filing periods allowed in Section 135(b) for copying claims,

or in Section 251 for seeking reissued patents, simply by

fashioning a new non-statutory requirement of additional

promptness. “[T]he words of a statute must be read in their

context and with a view to their place in the overall statutory

scheme.” Davis v. Michigan Dept. of Treasury, 489 USS.

803, 809 (1989).

The court of appeals also took no account of the most

illuminating part of the legislative record: the fact that

Congress, at the very time that it enacted Sections 120 and

121, strongly resisted efforts to curb the rights of patent

applicants filing continuation and divisional applications.

Tellingly, the supporters of patent reform had argued for

many years that new limitations were needed because existing

law placed no limits on delay. See, e.g., Court of Patent

Appeals and Limiting Patents to 20 Years, Hearings on S.

2687 and S. 2688 before the Senate Comm. on Patents, 76th

Cong., Ist Sess. 44-52, 59, 62 (1939) (statement of

Commissioner Coe); Recording Patent Agreements and

Limiting Patents to 20 Years, Hearings on H.R. 2630, 2631,

and 2632 Before the House Comm. on Patents, 79th Cong.,

Ist Sess. 22-24 (1945) (statement of Richard J. Dearborn); id.

at 27-28 (statement of John C. Stedman); id. at 39-40

(statement of Commissioner Coe); id. at 41-44 (statement of

Assistant Commissioner Henry). Although these reformers

sought to make the terms of patents issued on divisional or

continuation applications coterminous with the terms of any

patents issued on the original application, House Comm. on

the Judiciary, Proposed Revision and Amendment of the

Patent Laws, Preliminary Draft with Notes, § 35, at 21

(Comm. Print 1950), Congress refused to limit patent rights

in that fashion, and further rejected an alternative proposal to

date all patent rights from the filing of the original

application. Id. § 57, at 43. Instead, Congress chose to make

21

clear its intention that simultaneously pending applications,

so long as they claimed inventions disclosed in a previous

application, were to be treated as part of, and thereby entitled

to the priority of, the earlier application. See 35 U.S.C.

§§ 120-21.'° | Moreover, Congress did not make those

applications subject to intervening adverse rights, as it did for

applications seeking to obtain reissued patents. See 35 U.S.C.

~ §§ 251-52.

Finally, it is significant that Congress, when it finally did

come to decide that patent rights should be measured from the

date of original application, chose to act on a prospective

basis only. Prior to 1994, various patent experts once again

lamented the use of continuation and divisional applications

to extend patent rights, and then as before, the gist of many of

those arguments was that such actions were (but should not

be) Jegal under the existing system. See, e.g., Patents

Legislation, Hearings on H.R. 359, H.R. 632, H.R. 1732 and

" H.R. 1733 Before the Subcomm. on Courts and Intellectual

Property, 104th Cong., Ist Sess. 134 ( 1995) (statement of

Chairman Moorhead) (“filing successive continuing

applications . . . [is] a legal means of intentional delay”); see

also id. at 45-46 (testimony of Commissioner Lehman)

(criticizing “submarine patents”); id. at 169-70 (statement of

Professor Mark A. Lemley). This time Congress agreed that

change was needed, but it made the changes for the future

only: having itself set the preexisting statutory requirements,

Congress refrained from taking any action to deny patent

rights to inventors who had observed them. Against this

background, the decision by the Federal Circuit to limit those

'0 Since that treatment of co-pending applications had long been

recognized by this Court, see Godfrey v. Eames, supra, the language of

Sections 120 and 121 did, in fact, represent preexisting law not previously

incorporated into the Act. See Pet. App. 8a. What it did not do, however,

was to enact a freestanding laches doctrine that was neither part of the

recognized law at the time nor in any way expressed in the Act.

22

rights retroactively, on the strength of a supposedly reborn

doctrine of “prosecution laches,” is an inexcusable intrusion

into legislative terrain.

3. The decision below also contradicts decades of

consistent holdings by the Federal Circuit, and by the Court

of Customs and Patent Appeals before it, that applicants need

only comply with the express requirements of Section 120 in

order to obtain the benefits that it extends. See Transco

Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551,

556 (Fed. Cir. 1994); Racing Strollers, Inc. v. TRI Industries,

Inc., 878 F.2d 1418, 1421 (Fed. Cir. 1989) (en banc);

Studiengesellschaft Kohle mbH v. Northern Petrochemical

Co., 784 F.2d 351 (Fed. Cir. 1986); In re Bauman, 683 F.2d

405, 407 (CCPA 1982); In re Hogan, 559 F.2d 595 (CCPA

1977); In re Henriksen, 399 F.2d 253 (CCPA 1968). The

court in /n re Hogan, for example, emphasized that Section

120 afforded patent applicants important statutory rights, see

559 F.2d at 603, and then approvingly quoted the admonition

from this Court that “[a] party seeking a right under the patent

statutes may avail himself of all their provisions, and the

courts may not deny him the benefit of a single one.” /d.,

quoting American Bell Telephone Co., 167 U.S. at 247.

Twelve years later, the Federal Circuit took the same

position, stating: “In our view, § 120 gives to any applicant

for a patent complying with its terms the right to have the

benefit of the filing date of an earlier application.” Racing

Strollers, 878 F.2d at 1421. Then, in Transco Products, 38

F.3d at 556, the court of appeals reiterated that “[t]he plain

and unambiguous meaning of section 120 is that any

application fulfilling the requirements therein ‘shall have the

same effect’ as if filed on the date of the application upon

which it claims priority.” /d.

The Federal Circuit, in fact, twice specifically rejected

arguments that it should engraft an equitable doctrine of

laches onto the statutory requirements of Section 120,

23

evidently regarding the issue as so settled that it did not even

designate the opinions for publication. See Bott v. Four Star

Corp., supra; Ricoh Co. v. Nashua Corp., supra. See also

Fed. Cir. R. 47.6(b) (providing for nonpublication of opinions

“not adding significantly to the body of law”). In Bott,

dismissing attempts to rely on Webster for a broad laches

doctrine, the court of appeals found no reason to “adopt

equitable safeguards to limit continuation applications when

the Congress gave no indication that it intended to do so.” /d.

at **1. Similarly, in Ricoh, handed down just three years

ago, the Federal Circuit again declined to “judicially adopt

equitable safeguards, in contravention of established prece-

dent, when Congress itself has declined to do so.” Jd. at **3.

The court of appeals expressly agreed with its pred-

ecessor court that “‘a limit upon continuing applications . . . is

a matter of policy for Congress, not for us.’” Ricoh, at **3,

quoting Jn re Hogan, 559 F.2d at 604 n. 13.

C. “Courts of equity cannot, in their discretion, reject the

balance that Congress has struck in a statute.” United States

v. Oakland Cannabis Buyers’ Cooperative, 532 U.S. 483, 497

(2001). Yet, that is precisely what the Federal Circuit has

done here. Apparently responding to the same complaints

made to Congress, the court of appeals simply acted on its

own initiative to curtail patent rights granted by the ‘Act. We

have discussed the reasons why this is an improper exercise

of judicial authority. But, even viewed purely as a matter of

policy, this decision is an unwarranted revision of the

patent system.

Most notably, of course, the Federal Circuit has played

havoc with the expectations of inventors who relied on the

express statutory entitlements. As this Court has just

observed, “courts must be cautious before adopting changes

that disrupt the settled expectations of the inventing com-

munity.” Festo Corp. v. Shoketsu Kinzoku Koygo Kabushiti,

Ltd., 122 S. Ct. at 1841. But the court of appeals below has

24

now declared that—regardless of the statutory terms and its

own prior rulings indicating that the issue was settled—all

patents and patent applications are subject to invalidation

whenever applicants have failed to make their claims within

an unknown acceptable time. See Koffs, The Legal

Intelligencer, Feb. 7, 2002 (“The Court of Appeals for the

Federal Circuit has altered the face of patent litigation by

holding that an equitable defense of prosecution laches may

be applied to bar enforcement of an otherwise valid U.S.

patent”). To make matters worse, the inevitably imprecise

nature of this doctrine exposes patentees to the vagaries of a

“thumbs up/thumbs down” judicial judgment. This potential

for selective litigant-based enforcement, in a matter involving

important property interests, necessarily undermines

confidence in the fairness of the patent system: “in the long

run, experience teaches that strict adherence to the procedural

requirements specified by the legislature is the best guarantee

of evenhanded administration of the law.” Mohasco Corp. v.

Silver, 447 U.S. 807, 826 (1980).

We also note that the Federal Circuit, as is often the case

when judges retilt a statutory balance, has given too little

weight to one of the competing interests. While it is

understandable that chains of patent applications, however

lawful, will draw criticism, the fact remains that the

applications can result in multiple patents only for an inventor

of considerable foresight. After all, for an inventor to gain

the benefit of an earlier filing date, the Act requires the

inventor to demonstrate that- he fully described any newly

claimed invention in a prior application. See 35 U.S.C.

§ 120; see also 35 U.S.C. § 112, 4 1. If an inventor meets that

demanding standard—one that has been toughened by the

Federal Circuit over the years, see, e.g., Vas-Cath, Inc. v.

Mahurkar, 935 F.2d 1555 (Fed. Cir. 1991)—it is hardly a

miscarriage of justice to grant him a patent for what he, in

25

fact, invented.'' As for the other side of the equation: given

that the filing of continuation and divisional applications has

become a common practice over the years, it would be

shortsighted for potential infringers, like respondents, to

assume that their products have not been disclosed in still-

pending (and thus still-secret) patent applications. The

possibility of a pending prior application is simply an

unavoidable risk for those who cannot show themselves to be

the true inventor.

Last but not least, the decision below will incite a vast

amount of burdensome collateral litigation. If history is any

guide, charges of undue delay will henceforth become a

standard feature of patent disputes, with infringers demanding

discovery into the reasons for each and every period of

inaction before the Patent Office. This sideshow will

necessarily result in protracted arguments about who bears

responsibility for each passage of time, beginning with

accusations by the infringer against the patent holder and

leading, in turn, to accusations by the patent holder against

the Patent Office. None of this turmoil is what Congress

intended, and this Court should grant review to consider this

serious reordering of the federal patent system.

'! The Federal Circuit has noted that, under the Act, it is not “in any

manner improper to amend or insert claims intended to cover a

competitor’s product the applicant’s attorney has learned about during the

prosecution of a patent application.” Kingsdown Medical Consultants,

Lid. v. Hollister, Inc., 863 F.2d 867, 874 (Fed. Cir. 1988). See also

Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1482 (Fed.

Cir. 1998) (same).

26

Il. BY DECLINING TO CONSIDER ITS PRIOR

UNPUBLISHED DECISIONS, THE FEDERAL

CIRCUIT VIOLATED THE FUNDAMENTAL

PRINCIPLE THAT SIMILARLY SITUATED

LITIGANTS ARE TO BE TREATED THE SAME

The refusal of the Federal Circuit to honor its own

decisions as precedent likewise merits further review. In

recent years, this Court, addressing whether judicial decisions

must apply retroactively, has emphasized that federal courts

are not free to apply different rules of law to similarly

situated litigants simply because that practice might better

serve collateral interests. See Harper v. Virginia Dept. of

Taxation, 509 U.S. 86 (1993); James B. Bears Distilling Co.

v. Georgia, 501 U.S. 529, 537 (1991) (opinion of Souter, J.);

id. at 547 (Blackmun, J., concurring in the judgment). In

Harper, the Court placed significant weight on the

“admonition that ‘[t]he Court has no more constitutional

authority in civil cases than in criminal cases to disregard

current law or to treat similarly situated litigants differently.’”

Id. at 97, quoting American Trucking Ass’ns, Inc. v. Smith,

496 U.S. 167, 214 (1990) (Stevens, J., dissenting). Several

years before, the lead opinion in Beam had similarly relied on

the principle “that litigants in similar situations should be

treated the same, a fundamental component of stare decisis

and the rule of law generally.” 501 U.S. at 537 (opinion of

Souter, J.); see id. at 540 (referring to the “equality principle,

that similarly situated litigants should be treated the same”).

In the same case, Justice Blackmun, speaking for three

Justices, took the view that a decision not to apply a decision

retroactively “violates the principle of treating similarly

situated defendants the same.” /d. at 547. See also BMW of

North America, Inc. v. Gore, 517 U.S. 559, 587 (1996)

(Breyer, J., concurring) (“[rlequiring the application of law

_.. helps to assure the uniform general treatment of similarly

situated persons that is the essence of law itself).

27

The decision of a federal appeals court to disregard prior

unpublished opinions as precedent offends that fundamental

principle. In ruling that the patents held by petitioner could

be deemed unenforceable under a doctrine of prosecution

laches, the Federal Circuit did not even attempt to distinguish

its two prior cases holding that no such doctrine exists. See

Ricoh Co. v. Nashua Corp.; Bott v. Four Star Corp.. Rather,

it simply chose to announce a different rule, thereby denying

petitioner the benefit of established law that would have been

dispositive in its favor. As explanation, the court of appeals

argued that “[cJourts contribute to the growing imprecision,

uncertainty and unpredictability of the law by issuing

repetitive opinions on subjects that have been thoroughly

irrigated.” Pet. App. 13a. But this reasoning gets matters

backwards: if a prior decision has done nothing more than

repeat and apply settled law, that is all the more reason for the

same court of appeals to apply it again in a subsequent case,

rather than set off in a wholly different direction at the

expense of similarly situated litigants then before it.

The legitimacy of disregarding unpublished opinions has

caused considerable debate in the federal courts of appeais.

Most notably, the Eighth Circuit has held (in a decision later

vacated on grounds of mootness) that the practice of treating

unpublished opinions as nonprecedential is unconstitutional,

finding it inconsistent with the appropriate exercise of judicial

power under Article III. See Anastasoff v. United States,

supra. In addition, three judges of the Fifth Circuit have

urged that Circuit to consider the legitimacy of unpublished

opinions, saying that the “holding [of the Eighth Circuit] on

the constitutional question is at least arguable.” Williams v.

Dallas Area Rapid Transit, 256 F.3d 260, 262 (Sth Cir. 2001)

(Smith, J., dissenting from denial of rehearing en banc). For

its part, the Ninth Circuit has weighed in strongly on the other

side, see Hart v. Massanari, supra, holding that Article Ill

does not require a federal court of appeals to follow its own

28

decisions. See id. at 1180. The Federal Circuit has now

aligned itself with the views of the Ninth Circuit. Pet.

App. 10a."

The question is one that needs to be resolved.'> Recent

studies indicate that more than four of every five opinions

issued by federal courts of appeals are unpublished. See

Administrative Office of the U.S. Courts, Judicial Business of

the United States Courts: 2001 Annual Report of the

Director, Supp. Tbl. 5-3. As critics of the practice have

observed, see Williams v. Dallas Area Rapid Transit, 256

F.3d at 262 (Smith, J., dissenting from denial of rehearing en

banc), these cases often do not fit the description of

“repetitive opinions on subjects that have been thoroughly

irrigated.” Pet. App. 13a. Although there is no longer an

active conflict among the courts of appeals, the reasoning of

the Eighth Circuit in Anastasoff casts genuine doubt on a

practice followed in most cases by most courts of appeals. It

is important to know, sooner rather than later, whether that

practice comports with constitutional principles.

12 The decision in Anastasoff has also provoked extensive scholarly

discussion. See, e.g., Price, Precedent and Judicial Power After the

Founding, 42 B.C. Law Rev. 81 (2001); Robel, The Practice of

Precedent: Anastasoff, Noncitation Rules, and the Meaning of Precedent

in an Interpretive Community, 35 Ind. L. Rev. 399 (2002); Katsh &

Chachkas, Constitutionality of “No-Citation Rules,’ 3 The Journal of

Appellate Practice and Process 287 (2001).

13 This Court previously granted review to decide, among several

questions, whether the Seventh Circuit could apply its unpublished

opinion rule. See Browder v. Dept. of Corrections of Illinois, 434 U.S.

257, 258 n.1 (1978). The Court disposed of the case, however, without

reaching the question. /d.

29

CONCLUSION

The petition for a writ of certiorari should be granted.

Respectfully submitted,

ScoTT L. NELSON H. BARTOW FARR, III

1600 20th Street, NW Counsel of Record

Washington, DC 20009 RICHARD G. TARANTO

(202) 588-7724 FARR & TARANTO

Louis J. HOFFMAN econ Se Street, NW

Louis J. HOFFMAN, P.C. Washington, DC 20036

14614 N. Kierland Blvd. (202) 775-0184

Suite 300 ) ;

Scottsdale, AZ 85254 GERALD D. HOSIER

(480) 948-3295 LAW OFFICES OF

GERALD D. HOSIER

8904 Canyon Springs Drive

Las Vegas, NV 89117

(702) 256-8904