Symbol Technologies, Inc., Accu-Sort Systems, Inc., Intermec Technologies Corp., Metrologic Instruments, Inc., Psc Inc., Teklogix Corporation, Zebra Technologies Corp., Cognex Corporation, and Telxon Corporation v. Lemelson Medical, Education & Research Foundation, Lp

Citations: 422 F.3d 1378; 76 U.S.P.Q. 2d (BNA) 1354; 2005 U.S. App. LEXIS 19439Docket: 04-1451

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 ruled in favor of Symbol Technologies and others, declaring Lemelson's patent claims invalid due to lack of enablement, unenforceable under prosecution laches, and not infringed. The Federal Circuit upheld the district court’s decision on the enforcement issue. Lemelson is the assignee of approximately 185 unexpired patents and many pending applications from Jerome H. Lemelson, primarily related to 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 for inspecting and measuring objects, while the 1956 application focused on magnetic recording methods. A continuation-in-part application was filed in 1963, which contributed to the issuance of U.S. Patent 3,081,379 and led to additional patents filed between 1977 and 1993.

Fourteen patents are under review, with Claim 12 of U.S. Patent 4,979,029 serving as a representative example. This claim outlines a method for inspecting an image field to identify a specific image phenomenon, involving steps such as scanning the image field, generating electrical signals based on detected contrasting portions, analyzing these signals, comparing them to stored information indicative of the phenomenon, and producing signals that confirm the phenomenon's presence.

Symbol Technologies, which designs and sells bar code scanners and related products, received letters from Lemelson in 1998 alleging that its products infringed several Lemelson patents. Symbol feared it would need to indemnify its customers if the patents were deemed valid and infringed, prompting it to file a declaratory judgment action against Lemelson. Symbol sought declarations that the patents were not infringed, invalid due to lack of utility, anticipation, obviousness, failure to meet written description and enablement requirements, and unenforceable due to prosecution laches and inequitable conduct.

Lemelson's motion to dismiss was partially successful; the district court ruled there was a sufficient case or controversy but dismissed the prosecution laches claim. Symbol subsequently appealed, questioning whether laches could bar enforcement of patent claims issued after an unreasonable delay, despite compliance with statutes. The appellate court reversed the dismissal of the prosecution laches defense, affirming its legal viability and sending the case back for fact determination.

Following a bench trial from late 2002 to mid-2003, the district court found in January 2004 that Lemelson's patents were unenforceable due to prosecution laches, invalid for lack of enablement, and not infringed by Symbol's products.

The court ruled that Lemelson's lengthy delay (18 to 39 years) in filing and prosecuting claims related to fourteen patents was unreasonable, invoking the doctrine of prosecution laches despite no evidence of intentional stalling by Lemelson. This decision was supported by strong evidence of intervening rights. Consequently, the court deemed the claims unenforceable.

Lemelson had claimed priority for sixty-eight patent claims back to a 1963 application, which he argued was connected to earlier 1954 and 1956 applications. The court rejected this assertion, stating that Lemelson failed to demonstrate the necessary relationship under 35 U.S.C. 120 and Patent Office Rule 78(a). As a result, the claims could not benefit from the earlier filing dates.

The court also analyzed the term "pre-positioning," concluding that all claims required this limitation, which excluded Symbol's products from Lemelson's invention. Furthermore, the court interpreted "scanning" as involving television or video cameras, rejecting Lemelson's broader interpretation that included laser or CCD cameras, which were not available during the relevant time. Similarly, the court defined "computer analyzing" as a simple computing circuit rather than a general-purpose computer, ultimately ruling that Symbol's products did not infringe Lemelson's asserted claims.

The district court defined a person of ordinary skill in the art relevant to Lemelson's patents as an electrical engineer with approximately two years of experience in signal processing and television electronics, supporting Symbol's expert testimony. This definition led the court to reject Lemelson's assertion that such a person should consist of a team of experts across various fields. The court noted that Lemelson's experts conceded that an individual fitting this definition would not be enabled to practice the inventions, resulting in a holding of invalidity for lack of enablement under 35 U.S.C. § 112.

Additionally, the court dismissed Symbol's defenses of anticipation and inequitable conduct due to insufficient evidence and deemed it unnecessary to evaluate the written description requirement since Lemelson's claim construction was rejected. Lemelson's request for attorney fees related to Symbol's litigation conduct was also denied. Ultimately, the court ruled Lemelson's patents invalid for lack of enablement, unenforceable due to prosecution laches, and not infringed. 

On appeal, Lemelson contends the district court incorrectly determined that the 1963 application was not entitled to the priority date of the earlier 1954 and 1956 applications, arguing it met the requirements of 35 U.S.C. § 120 by referencing the prior applications appropriately. In contrast, Symbol argues that the reference was inadequate, asserting that a "substantial portion" of the earlier application needed to be repeated in the later one, which was not the case. Lemelson also challenges the enablement ruling, claiming the court's definition of a skilled artisan was erroneous, as it failed to recognize the need for expertise across multiple fields.

The district court found Symbol's expert, Dr. Horn, more credible than Lemelson's expert, Dr. Williamson, regarding the definition of a skilled artisan, determining it to be an electrical engineer rather than a team of experts. Symbol argues that Lemelson's broader interpretation could complicate patent law by expanding the standard for assessing patent compliance. Lemelson contends that the district court erred in ruling the patents unenforceable due to prosecution laches, arguing that the court relied solely on the delay in patent issuance and failed to consider justifications for the elapsed time, such as PTO restrictions and reviews. Lemelson asserts that there was no evidence of intentional delay by Symbol, which should negate its equitable defense. In response, Symbol claims the court analyzed various factors beyond mere elapsed time, including Lemelson's conduct with the PTO and the impact of delays on the public, supporting its position that the laches standard only requires a finding of "unreasonable and unexplained" delay. Lemelson further disputes the court's claim constructions and the exclusion of certain evidence, including depositions from the deceased inventor, as well as the ruling of non-infringement. The court agrees with Symbol that the district court did not abuse its discretion in declaring Lemelson's patents unenforceable under prosecution laches, a doctrine applicable in cases of unreasonable and unexplained prosecution delays. Precedent supports that prosecution laches can render patents unenforceable, and the determination of its existence is left to the district court's equitable discretion.

The court addressed the applicability of laches in patent law, indicating that previous cases with significant delays did not strictly impose a two-year time limit, as previously mentioned in Webster. Instead, the determination of whether refiling patent applications is appropriate or an abuse of the statutory system is to be made at the discretion of the district court based on equitable principles. Legitimate reasons for refiling include responding to restriction requirements, presenting new evidence of an invention's advantages, or adding subject matter to support broader claims. These actions align with statutory provisions under 35 U.S.C. 121 and do not typically invoke laches unless they are excessively repetitive or demonstrate a pattern of unjustified delay. The court identified that in this case, an extensive delay of 18 to 39 years occurred between filing and issuance of patents, which deviates from the expectations of the patent statute. The court noted the detrimental impact on businesses due to uncertainty about patent status and found that Lemelson had demonstrated "culpable neglect" in managing the prosecution of these applications.

The Lemelson patents were noted for having the longest prosecution times from 1914 to 2001, occupying the top thirteen positions in that regard. The court acknowledged the presence of "intervening private and public rights" and concluded that the defense of prosecution laches was applicable under the totality of circumstances presented. It determined that there were very few situations where this defense would not apply, suggesting that the court did not abuse its discretion in deeming the patents unenforceable based on this doctrine. A thorough examination of the facts and equities led to the reasonable exercise of discretion by the court, resulting in an affirmance of the district court's ruling on unenforceability. Consequently, the appellate court found it unnecessary to address Lemelson's claims regarding earlier priority dates, enablement, claim construction, infringement, or other raised issues, as those matters were rendered moot. The judgment of unenforceability was affirmed, specifically for the patents listed.