Jerome H. Lemelson - Patents and Litigation

Patents and Litigation

Jerome H. Lemelson was granted over 600 patents, making him one of the 20th century's most prolific patent grantees.

Through much of his later career, Lemelson was involved in a series of patent litigations and subsequent licensing negotiations. As a result, he was both excoriated by his legal opponents and hailed as a hero by many independent inventors. For example, Lemelson claimed he had invented the "flexible track" used in the popular "Hot Wheels" toys manufactured by Mattel. In the 1980s Lemelson sued for willful patent infringement, from which he initially won a substantial judgement in a jury trial. This case was later overturned on appeal. Later that same year, Lemelson won a 17 million dollar judgement against Illinois Tool Works for infringement on a robot tool spraying device.

In relation to other litigation, Lemelson is most well known for what he termed his "machine vision" patents, the earliest of which dates from the mid-1950s. These patents described scanning visual data from a camera, which are then stored in a computer. Combining with robotic devices and bar coders, this technology could be used to check, manipulate, or evaluate the products moving down an assembly line. Items or products could then be adjusted or sent on to different parts of a factory for further procedures. Lemelson also sued a variety of Japanese and European automotive and electronics manufacturers for infringing on his machine vision patents. Lemelson and these companies reached a settlement, with the companies taking a license to the patents, in 1990-1991.

Lemelson later utilized this strategy in attempting to reach settlements over alleged patent infringement with American companies. Before his death he first sued, then negotiated and received licenses from a variety of corporations. He was controversial for his alleged use of submarine patents to negotiate licenses worth over 1.3 billion dollars from major corporations in a variety of industries. Partially as the result of his filing a succession of continuation applications, a number of his patents, particularly those in the field of industrial machine vision, were delayed, in some cases by several decades. This had the effect of taking the industry by surprise when the patents in question finally issued; hence the term submarine patent.

Lemelson's supporters have claimed that the bureaucracy of the Patent Office was also responsible for the long delays. The courts, in the Symbol and Cognex case discussed below, however found that Lemelson had engaged in “culpable neglect” and noted that "Lemelson patents occupied the top thirteen positions for the longest prosecutions from 1914 to 2001." However, they found no convincing evidence of inequitable conduct. Indeed, Lemelson always claimed that he followed all the rules and regulations of the United States Patent Office.

In 2004, Lemelson's estate was defeated in a notable court case involving Symbol Technologies and Cognex Corporation, which sought (and received) a ruling that 76 claims under Lemelson's machine vision patents were unenforceable. The plaintiff companies, with the support of dozens of industry supporters, spent millions on this landmark case. The ruling was upheld on September 9, 2005 by a three judge panel of the U.S. Court of Appeals for the Federal Circuit under the doctrine of laches, citing "unreasonably long delays in prosecution". Lemelson's estate appealed for a review by the full circuit en banc. On November 16, 2005, the full court declined to review the case, but, citing "prejudice to the public as a whole," extended the original unenforceability ruling to all claims under the patents in question.

However, the judge also ruled that Cognex and Symbol did not demonstrate that Lemelson had "intentionally stalled" getting the patents. Lemelson himself always denied intentionally stalling the patent application process, and asserted that he attempted for many years to get companies interested in his ideas, only to be rejected by what he termed the "not invented here" response. Indeed, although Lemelson died in 1997, uncontested patents he had applied for were still being issued as late as 2005-2006, such as his patent titled "Superconducting electrical cable" (U.S. Patent 6,951,985) which was applied for in May 1995, but only issued in October 2005.

To this day, the battle wages on in Congress as supporters of a more narrowly defined patent law seek shelter from independent inventors like Lemelson who emerge after an extended period of time demanding large licensing fees.

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