Prosecution Laches and Res Judicata

I.

PROSECUTION LACHES

The Federal Circuit affirmed a rejection of claims in a patent

application on the ground that applicant had forfeited his right to a patent under the

doctrine of prosecution history laches for unreasonable and undue delay in prosecution.

In re Bogese,

303 F.3d 1362, 1369, 64 USPQ2d 1448, 1453 (Fed. Cir.

2002) (Applicant “filed twelve continuation applications over an eight-year period and

did not substantively advance prosecution when required and given an opportunity to do

so by the PTO.”). See also

Hyatt v. Hirshfeld,

998 F.3d 1347, 2021

USPQ2d 591 (Fed. Cir. 2021). While there are no firm guidelines for determining when

laches is triggered, it applies only in egregious cases of unreasonable and unexplained

delay in prosecution. For example, where there are “multiple examples of repetitive

filings that demonstrate a pattern of unjustified delayed prosecution,” laches may be

triggered.

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

Found.,

422 F.3d 1378, 1385, 76 USPQ2d 1354, 1360 (Fed. Cir. 2005)(Court

discussed difference between legitimate reasons for refiling patent applications and

refilings for the business purpose of delaying the issuance of previously allowed

claims.). An examiner should obtain approval from the TC Director before making a

rejection on the grounds of prosecution history laches.

II.

RES JUDICATA

A patent owner or applicant may be precluded from seeking a claim that

is not patentably distinct from a claim that was finally refused or canceled during an

administrative trial or federal court proceeding under the doctrine of

res

judicata.

Similarly, a patent owner may be precluded from seeking an

amendment of a specification or drawing that was denied entry during a trial if the

application or patent for which the amendment is sought has the same written description

as the patent or application that was the subject of the administrative trial or federal

court proceeding. See

37 CFR 42.73(d)(3)

g under the doctrine of

res

judicata.

Similarly, a patent owner may be precluded from seeking an

amendment of a specification or drawing that was denied entry during a trial if the

application or patent for which the amendment is sought has the same written description

as the patent or application that was the subject of the administrative trial or federal

court proceeding. See

37 CFR 42.73(d)(3)

.

A patent owner or applicant may be precluded from

seeking a claim that is not patentably distinct from a claim that was previously

rejected if the rejection was affirmed on appeal and the decision on appeal became

final. A

res judicata

rejection should be applied only when the

earlier decision was a decision of the Patent Trial and Appeal Board (or its predecessor

Board) or any one of the reviewing courts and when there is no opportunity for further

court review of the earlier decision. See

In re Hitchings,

342 F.2d

80, 85, 144 USPQ 637, 641 (CCPA 1965) (holding that unappealed rejections from examiners

cannot have a preclusive effect).

When making a rejection on

res judicata,

any prior

art rejection under

35 U.S.C. 102

or

35 U.S.C.

103

should ordinarily be made on the basis of the same prior art,

especially in continuing applications. In most situations, the same prior art which was

relied upon in the earlier decision would again be applicable.

In the following cases, a rejection of a claim based on the ground of

res judicata

was sustained where it was based on a prior

adjudication, against the inventor, on the same claim, a patentably nondistinct claim,

or a claim involving the same issue.

Edgerton v. Kingsland,

168 F. 2d 121, 75 USPQ 307 (D.C. Cir.

1947).

In re Katz,

467 F.2d 939, 167 USPQ 487 (CCPA 1970) (prior decision by

a district court).

In the following cases,

res judicata

rejections were

reversed for various reasons.

In re Fried,

312 F.2d 930, 136 USPQ 429 (CCPA 1963) (

res

judicata

not applicable based on the definition of a “final” Board decision

found in an older version of the MPEP)

Kingsland,

168 F. 2d 121, 75 USPQ 307 (D.C. Cir.

1947).

In re Katz,

467 F.2d 939, 167 USPQ 487 (CCPA 1970) (prior decision by

a district court).

In the following cases,

res judicata

rejections were

reversed for various reasons.

In re Fried,

312 F.2d 930, 136 USPQ 429 (CCPA 1963) (

res

judicata

not applicable based on the definition of a “final” Board decision

found in an older version of the MPEP).

In re Hellbaum,

371 F.2d 1022, 152 USPQ 571 (CCPA 1967) (

res

judicata

not applicable because the previously adjudicated and current

claims were too different to satisfy the “identity of issues” element of

res

judicata

).

In re Herr,

377 F.2d 610, 153 USPQ 548 (CCPA 1967) (

res

judicata

not applicable despite similarities between previously adjudicated

and current claims because applicant provided new evidence of patentability).

In re Kaghan,

387 F.2d 398, 156 USPQ 130 (CCPA 1967) (

res

judicata

not applicable based on the definition of a “final” Board decision

found in an older version of the MPEP).

In re Craig,

411 F.2d 1333, 162 USPQ 157 (CCPA 1969) (

res

judicata

not applicable because the previously adjudicated and current

claims were too different to satisfy the “identity of issues” element of

res

judicata

).

In re Fisher,

427 F.2d 833, 166 USPQ 18 (CCPA 1970) (

res

judicata

not applicable because the previously adjudicated and current

claims were too different to satisfy the “identity of issues” element of

res

judicata

).

In re Russell,

439 F.2d 1228, 169 USPQ 426 (CCPA 1971) (

res

judicata

not applicable despite similarities between previously adjudicated

and current claims because applicant provided new evidence of patentability).

In re Ackermann,

444 F.2d 1172, 170 USPQ 340 (CCPA 1971)

(

res judicata

not applicable because the previously adjudicated

and current claims were too different to satisfy the “identity of issues” element of

res judicata

).

Plastic Contact Lens Co. v. Gottschalk,

484 F.2d 837, 179 USPQ 262

(D.C. Cir

previously adjudicated

and current claims because applicant provided new evidence of patentability).

In re Ackermann,

444 F.2d 1172, 170 USPQ 340 (CCPA 1971)

(

res judicata

not applicable because the previously adjudicated

and current claims were too different to satisfy the “identity of issues” element of

res judicata

).

Plastic Contact Lens Co. v. Gottschalk,

484 F.2d 837, 179 USPQ 262

(D.C. Cir. 1973) (

res judicata

not applicable based on the definition

of a “final” Board decision found in an older version of the MPEP).

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