Patent Federal Circuit Update

Right to Patent Forfeited under Doctrine of Prosecution History Laches

In In re Bogese, No. 01-1354 (Sep. 13, 2002), the Federal Circuit Court of Appeals upheld the decision of the Patent and Trademark Office (PTO) Board of Patent Appeals and Interferences that based on the doctrine of prosecution history laches, an applicant who repeatedly abandoned an application, filing twelve continuation applications over eight years, without substantively responding to the examiner's rejections had forfeited his right to a patent.

In 1978 Bogese filed a patent application relating to an electrical connector serving as an interface between a telephone plug and a printed circuit board. When the PTO examiner rejected the claims of that application as obvious under 35 U.S.C. 103, Bogese abandoned it in favor of a continuation-in-part application. Prosecution of that application twice reached the Federal Circuit on appeal from a Board rejection. In 1987, the Federal Circuit affirmed the Board's rejection of all pending claims as obvious under section 103.

Thereafter, Bogese abandoned the pending application and filed a file wrapper continuation including the same rejected claims without offering further arguments regarding their patentability. When the examiner rejected the claims in the continuation application, Bogese abandoned that application and again, without amending the claims or arguing their patentability, filed a file wrapper continuation application. This process occurred eight more times between 1989 and 1994, when the examiner issued a final rejection of Bogese's claims and warned the applicant that "the next continuation of this series may be rejected by invoking the equitable doctrine of laches, absent any substantive amendment to advance prosecution." Refusing to heed the examiner's warning, Bogese again filed a continuation application with the same rejected claims. As warned, the examiner rejected that application stating that "applicant has forfeited the right to a patent" because "Applicant has clearly made no attempt to advance the examination of the claimed invention."

Thereafter, Bogese substantively responded to the examiner's rejections for the first time by amending the claims, submitting affidavits in support of patentability, and arguing that he could not have forfeited the right to a patent when in prosecuting his chain of applications he had always complied with the requirements of 35 U.S.C. 120. Unpersuaded, the examiner issued a final rejection. Bogese appealed to the Board. When the Board upheld the examiner's rejection based on prosecution history laches, Bogese appealed to the Federal Circuit.

While the Federal Circuit had recently held in Symbol Techs., Inc. v. Lemelson Medical, 277 F.3d 1361, 1368 (Fed. Cir. 2002), that "a patent may be rendered unenforceable if it was obtained after an unreasonable and unexplained delay in prosecution," it considered for the first time whether the PTO could reject a patent application when the applicant fails to advance prosecution of his application for an unreasonably long period of time, and whether, in Bogese's case, the PTO had acted arbitrarily in rejecting the application. Finding "no basis for denying the power to the PTO itself that [the Court] recognized existed in the district courts in infringement actions," the Court held that "[i]t necessarily follows that the PTO has the authority to reject patent applications for patents that would be unenforceable under [the] holding in Symbol Technologies." The Court explained that, like other administrative agencies, the PTO had the power to "impose reasonable deadlines and requirements on parties that appear before it." The Court noted that the PTO could not enforce forfeiture without notice to an applicant, but found that in this case Bogese had been given proper notice and had chosen to ignore it. The Federal Circuit further found that based on the history of Bogese's repeated filing of continuation applications without substantively responding to the examiner's rejections, the PTO had not arbitrarily applied the doctrine of prosecution history laches in rejecting Bogese's application.

Copying Opposing Party's Patent Application Obtained During Discovery and Submitting it to PTO as its Own Violates Protective Order

In Eagle Comtronics, Inc. v. Arrow Comm. Labs., Inc., Nos. 01-1544, 01-1591 (Sep. 17, 2002), the Federal Circuit Court of Appeals reversed the district court's finding that plaintiff Eagle and its counsel did not violate a protective order agreed to by the parties and remanded the case for the district court to impose an appropriate sanction. The Federal Circuit also vacated the grant of summary judgment of noninfringement and remanded the case for resolution of disputed factual issues.

Eagle owns U.S. Patent No. 5,662,494 ("the '494 patent"), directed to an improvement related to electrical signal filters that are used to decode or unscramble protected television signals. Specifically, the invention relates to an improved cable filter structure that provides a sealed collet (or band) assembly to prevent moisture or other contaminants from entering the filter. The accused devices relate to defendants' (collectively "Arcom's") cable filters. Like the filters described in the '494 patent, Arcom's filters use a collet assembly to prevent moisture and other contaminants from entering the filter. Unlike the claimed collet assembly in the '494 patent, the accused filters do not have both a front cap and a rear insert body. Rather, the accused collet assembly is a one-piece insulation block. It was undisputed that the accused devices do not literally infringe the claims. The patent issue before the district court was whether the accused filters infringe under the doctrine of equivalents.

Before allowing discovery in the case, a magistrate judge entered a protective order agreed to by the parties which limited access to documents marked as "Confidential" to specific people. It further provided that confidential material "shall not be used for any purpose other than for this action, unless authorized by the Court," and that a party intending to...