## Facts

- Lemelson Medical, Education & Research Foundation owned a large portfolio of patents relating to machine-vision and bar-code technologies and claimed priority to applications filed in the 1950s.
- Lemelson pursued an extended licensing and enforcement program and sent infringement accusations to customers of companies including Symbol Technologies and Cognex, identifying specific patents and accusing particular products.
- Multiple manufacturers filed declaratory-judgment actions seeking rulings that selected Lemelson patents were invalid, unenforceable, and/or not infringed.
- The complaints also asserted equitable and statutory theories including laches, equitable estoppel, patent misuse, and antitrust and RICO-based claims.
- The district court dismissed several counts under Rule 12(b)(6), including the laches claim seeking a declaration that Lemelson’s damages would be barred due to delay.
- The accused infringers appealed, focusing primarily on whether laches could be pursued affirmatively in a declaratory-judgment action and whether the pleadings stated a laches claim.

## Issues

1. Whether an accused infringer may seek a declaratory judgment that a patentee’s claims for damages are barred by laches before the patentee files an infringement action.
2. Whether laches in patent cases may bar recovery of legal damages, rather than only equitable relief.
3. Whether the complaints plausibly alleged unreasonable and inexcusable delay and resulting material prejudice sufficient to survive Rule 12(b)(6).
4. Whether dismissal of other pleaded theories (including antitrust and RICO claims) was proper.

## Decision

- The Federal Circuit held an actual controversy existed because Lemelson’s enforcement communications and history created a substantial, immediate dispute.
- The court reversed the Rule 12(b)(6) dismissal of the laches claim, holding laches may be pursued as declaratory relief and may bar legal damages in patent cases.
- The court held the laches allegations (decades-long delay and prejudice from investment and business growth) were sufficient at the pleading stage.
- The court affirmed dismissal of certain other claims (including particular antitrust and RICO-based counts) as legally insufficient or inadequately pleaded.
- The judgment was affirmed in part, reversed in part, and remanded.

## Legal Principles

- Declaratory relief is available when there is a real and immediate controversy; an accused infringer may seek declarations concerning defenses as well as merits issues.
- In patent cases, laches requires (1) unreasonable and inexcusable delay in asserting rights and (2) material prejudice to the accused infringer; if proven, it may bar damages.
- On a Rule 12(b)(6) motion, well-pleaded allegations are taken as true, and dismissal is improper where the complaint plausibly alleges each element of the asserted doctrine.

## Conclusion

The Federal Circuit permitted accused infringers to seek declaratory relief that a patentee’s damages claim is barred by laches and reaffirmed that laches, if proven, can preclude legal damages in patent infringement disputes; it reinstated the laches claim while leaving other dismissed statutory theories intact.


Symbol Techs., Inc. v. Lemelson Med., Educ. & Rsch. Found., LP, 277 F.3d 1361 (Fed. Cir. 2002)