2190 Prosecution Laches and Res Judicata [R-07.2022]

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).

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).

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. 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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