December 2005                return to newsletter contents page

Lemelson Patents on Bar-Code Technology Held Unenforceable by Federal Appeals Court

Since 1992 hundreds of companies have settled Lemelson patent infringement claims and paid over $1.5 billion in licensing fees to the Lemelson Foundation.  On September 9, 2005, the U.S. Court of Appeals for the Federal Circuit ruled that the Lemelson patents are unenforceable.  (Symbol Technologies, Inc., et al. v. Lemelson Medical, Education & Research Foundation, LP, No. 04-1451)

During the last decade, inventor Jerome Lemelson, his heirs, and their attorneys have asserted that numerous U.S. companies, including some wholesaler-distributors, infringe one or more of his patents.  The infringement claims have generally involved patents that Mr. Lemelson’s attorneys call “machine vision” or “auto-id” patents.  The patents have been the subject of past and active litigation and “cease and desist” letters sent to hundreds of companies, alleging that every use of bar-code scanners and similar technology is a separate patent infringement.

In 2004, a district judge in Nevada ruled that 14 patents granted to the late Mr. Lemelson are unenforceable because he used unreasonable tactics to delay the processing of his patent applications in the U.S. Patent and Trademark Office (PTO).  The district court trial followed a 2002 appeal in which the Federal Circuit ruled that unreasonable delaying tactics may bar enforcement of patents even though the applicant complied with the letter of all of the provisions of the patent statute.  The 14 patents at issue in the Lemelson case involve machine vision and automatic identification bar-code technology, which Lemelson argued are entitled to the benefit of the filing date of two Lemelson patent applications first filed in the PTO in 1954 and 1956. 

In a unanimous decision, the Federal Circuit upheld the district court’s ruling.  Lemelson’s 18- to 39-year delay in presenting his patent claims in the PTO was an “egregious case of misuse” of the patent law, which justified cancellation of the patents.  Counsel for plaintiff Symbol Technologies, a bar-code equipment manufacturer, commented, “It’s unfortunate that so many companies paid for licenses they shouldn’t have had to pay for.”

This appeals court decision comes six years after the case was filed.  It is expected that Lemelson will seek reconsideration of the ruling and ask for U.S. Supreme Court review.