Symbol Technologies v. Lemelson Medical,education & Research Found.

Citation: 422 F.3d 1378Docket: 2004-1451

Court: Court of Appeals for the Federal Circuit; September 9, 2005; Federal Appellate Court

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Lemelson Medical, Education, Research Foundation, LP appeals a declaratory judgment from the U.S. District Court for the District of Nevada, which favored Symbol Technologies and others. The court ruled that Lemelson's patent claims were invalid due to lack of enablement, unenforceable under prosecution laches, and not infringed. The Federal Circuit, led by Circuit Judge Lourie, affirmed the district court's decision regarding unenforceability due to prosecution laches. Lemelson holds approximately 185 unexpired patents and numerous pending applications attributed to Jerome H. Lemelson, primarily concerning machine vision and automatic identification bar code technology. The patents claim priority from two applications filed in 1954 and 1956. The 1954 application detailed methods and apparatus for inspecting and measuring objects, while the 1956 application focused on magnetic recording technologies. A continuation-in-part application was filed in 1963, which led to additional patents issued between 1977 and 1993.

Fourteen patents are currently being evaluated, including Claim 12 of U.S. Patent 4,979,029, which outlines a method for inspecting an image field to identify a specific image phenomenon using electronic scanning. The method involves scanning an image field, generating electrical signals based on detected contrasting portions, analyzing these signals, comparing them to stored data indicative of the phenomenon, and producing signals that indicate the presence of the phenomenon.

Symbol Technologies, which designs and sells bar code scanners and related products, faced infringement claims from Lemelson, prompting Symbol to file a declaratory judgment action. Symbol seeks a ruling that the patents in question are neither infringed by them nor their customers and asserts that the patents are invalid for several reasons, including lack of utility, anticipation, obviousness, and failure to meet requirements for written description and definiteness, as well as being unenforceable due to prosecution laches and inequitable conduct.

Lemelson previously attempted to dismiss the case, claiming no sufficient controversy existed and that Symbol's prosecution laches claim was invalid. The district court ruled there was a case or controversy but dismissed Symbol’s claim of prosecution laches. Symbol then filed an interlocutory appeal regarding the application of laches to patent claims with delayed prosecution. The appellate court ultimately reversed the district court’s decision, allowing Symbol’s defense of prosecution laches to proceed and remanded the case for further factual investigation.

The court conducted a bench trial from November 2002 to January 2003, concluding with a decision in January 2004. It ruled that Lemelson’s patents were unenforceable due to prosecution laches, invalid for lack of enablement, and not infringed by Symbol’s products. Although Symbol did not prove intentional delay by Lemelson, the court stated that unreasonable delay alone suffices for prosecution laches. The court noted strong evidence of intervening rights, determining that Lemelson’s 18 to 39-year delay was unreasonable and unjustified.

Lemelson claimed that sixty-eight patent claims entitled to a 1963 filing date could connect back to 1954 and 1956 applications. However, the court rejected this argument, stating Lemelson failed to prove the 1963 application was a continuation-in-part of the earlier applications as required by patent rules. Consequently, Lemelson could not use the earlier applications for claim construction, and the claims were interpreted to require "pre-positioning" of the scanned object, which excluded Symbol's products from Lemelson’s invention.

Additionally, the court defined "scanning" as involving a television or video camera, rejecting Lemelson's broader interpretation that included laser or CCD cameras, which did not exist at the time of the applications. The court also declined Lemelson’s interpretation of "computer analyzing" or "computer processing," adopting Symbol’s narrower definition of a computing circuit for simple mathematical tasks.

Symbol’s devices, utilizing advanced technologies like laser and CCD cameras and programmable computers, were found not to infringe Lemelson’s patents due to the district court's refusal to interpret Lemelson’s claim terms to include such devices. The court determined that Lemelson did not demonstrate infringement and additionally ruled that the claims were invalid for lack of enablement under 35 U.S.C. § 112. In establishing the definition of a person of ordinary skill in the art, the court accepted Symbol’s expert testimony, defining it as an electrical engineer with about two years of experience in signal processing and television electronics. This definition contrasted with Lemelson’s argument for a multi-disciplinary team of experts. The court noted that even Lemelson's experts conceded that someone fitting the court's definition would not be able to practice the inventions claimed, thus invalidating the patents on enablement grounds.

Regarding other defenses, the court found Symbol's claims of anticipation and inequitable conduct lacked sufficient evidence and chose not to address Lemelson's written description defense since it relied on claim construction that had been rejected. Lemelson's request for attorney fees due to Symbol's alleged unreasonable litigation tactics was also denied. Ultimately, the district court declared Lemelson’s patents invalid for lack of enablement, unenforceable due to prosecution laches, and not infringed. Lemelson appealed, asserting that the district court incorrectly denied the 1963 application the benefit of priority from earlier applications, claiming it met the statutory requirements of 35 U.S.C. § 120. Symbol countered that the 1963 application did not sufficiently repeat a substantial portion of the earlier applications and argued against Lemelson’s enablement challenge by defending the single-engineer definition of skilled artisans.

The district court found Dr. Horn's testimony more credible than Dr. Williamson's regarding the definition of a skilled artisan, concluding that it properly refers to an electrical engineer, contrary to Lemelson's argument for a broader interpretation involving a team of experts. Symbol asserts that Lemelson's approach would overly complicate patent law by allowing minor field references to expand patent compliance standards. Lemelson contends the court abused its discretion in declaring the asserted patents unenforceable due to prosecution laches, claiming the district court focused solely on the delay in patent issuance without considering justifications such as PTO restrictions and review times. Lemelson argues that the court recognized Symbol failed to prove intentional delay, which should negate Symbol’s equitable defense. In contrast, Symbol argues that the court evaluated various factors beyond mere elapsed time, including Lemelson’s prosecution history and the impact of delays on the public and industry. Symbol emphasizes that the laches standard does not require proof of intentional delay, only that the delay is unreasonable and unexplained. Lemelson also challenges the court's claim constructions and evidence exclusions, including a lack of infringement finding. The court agrees with Symbol that there was no abuse of discretion in holding the patents unenforceable under prosecution laches, noting that this doctrine applies to unreasonable and unexplained delays without strict time limits. The court referenced precedent cases demonstrating that while previous delays were significant, no definitive timeframe governs the application of prosecution laches.

The case is to be resolved based on equitable principles at the discretion of the district court. Grounds for refiling a patent application are legitimate and should not typically invoke the laches doctrine unless there is egregious misuse of the patent system. Filing a divisional application in response to a restriction requirement is deemed a valid reason for refiling. The PTO’s practice of examining only one invention among several does not constitute abuse when filing divisional applications. Refilling applications to present new evidence of an invention's advantages or to support broader claims as development progresses is also permissible, provided it does not lead to undue repetition. However, refiling applications solely for delaying the issuance of previously allowed claims may be seen as an abuse, and patterns of unjustifiable delays may invoke laches, particularly when viewed in the context of related patents and overall prosecution history.

In this case, the district court found a significant 18- to 39-year delay between the filing and issuance of the patents, which is inconsistent with the patent statute's intent for timely issuance. The court identified 'culpable neglect' by Lemelson in prosecution and recognized the adverse impact on businesses unable to discern patent coverage. The patents in question had the longest prosecution times from 1914 to 2001. The court acknowledged intervening rights and concluded that prosecution laches applied under the circumstances. Consequently, the court did not abuse its discretion in deeming the patents unenforceable. The affirmance of this decision means that other issues raised, such as priority dates and infringement, are now moot and do not require further review. Thus, the judgment of unenforceability is upheld.