Symbol Technologies v. Lemelson Medical, 04-1451.

Decision Date09 September 2005
Docket NumberNo. 04-1451.,04-1451.
Citation422 F.3d 1378
PartiesSYMBOL TECHNOLOGIES, INC., Accu-Sort Systems, Inc., Intermec Technologies Corp., Metrologic Instruments, Inc., PSC Inc., Teklogix Corporation, Zebra Technologies Corp., Cognex Corporation, and Telxon Corporation, Plaintiffs-Appellees, v. LEMELSON MEDICAL, EDUCATION & RESEARCH FOUNDATION, LP, Defendant-Appellant.
CourtU.S. Court of Appeals — Federal Circuit

Jesse J. Jenner, Ropes & Gray LLP, of New York, New York, argued for plaintiffs-appellees. With him on the brief were Charles Quinn, Krista M. Rycroft, Kenneth B. Herman, William J. McCabe, and Pablo D. Hendler.

Richard G. Taranto, Farr & Taranto, of Washington, DC, argued for defendant-appellant. With him on the brief was Victoria Gruver Curtin, of Scottsdale, Arizona. Of counsel on the brief Gerald D. Hosier, of Las Vegas, Nevada, and Louis J. Hoffman, of Scottsdale, Arizona.

George M. Sirilla, Pillsbury Winthrop LLP, of McLean, Virginia, for amicus curiae National Retail Federation. With him on the brief was Raymond L. Sweigart.

Harold C. Wegner, Foley & Lardner LLP, of Washington, DC, for amicus curiae Takeda Pharmaceutical Co. Ltd. With him on the brief were Stephen B. Maebius, George C. Best, Rouget F. Henschel, and Sean A. Passino.

Frank E. Scherkenbach, Fish & Richardson P.C., of Boston, Massachusetts, for amici curiae Cypress Semiconductor Corp., LSI Logic Corp., Micrel, Inc., and Linear Technology Corp. With him on the brief were Katherine Kelly Lutton, John A. Dragseth, and Christian A. Chu.

Jonathan M. James, Perkins Coie Brown & Bain P.A., of Phoenix, Arizona, for amicus curiae Intel Corporation. With him on the brief were C. Randall Bain and Dan L. Bagatell.

Before MAYER, LOURIE, and BRYSON, Circuit Judges.

LOURIE, Circuit Judge.

Lemelson Medical, Education & Research Foundation, LP ("Lemelson") appeals from the declaratory judgment of the United States District Court for the District of Nevada in favor of Symbol Technologies, et al. (collectively, "Symbol") that Lemelson's asserted patent claims are invalid for lack of enablement, unenforceable under the doctrine of prosecution laches, and not infringed. Symbol Techs., Inc. v. Lemelson Med., Educ. & Research Found., 301 F.Supp.2d 1147 (D.Nev.2004) ("Symbol III"). Because we conclude that the district court did not abuse its discretion in holding that Lemelson's patents are unenforceable under the doctrine of prosecution laches, we affirm.

BACKGROUND

Lemelson is the assignee of approximately 185 unexpired patents and many pending patent applications of the late Jerome H. Lemelson. The patents at issue here generally involve machine vision and automatic identification bar code technology and are asserted to be entitled to the benefit of the filing date of two Lemelson patent applications filed in 1954 and 1956.

In December 1954, Mr. Lemelson filed a patent application that disclosed methods and an apparatus for performing the inspection and measurement of objects. The specification stated: "This invention relates to automatic production equipment and related devices and particularly devices which will perform an automatic operation or operations on work in progress." In 1956, he filed a second application, this time disclosing methods and an apparatus relating to "magnetic recording and particularly to recording means and arrangements whereby video image signals may be used for effecting a multiple of computing, operative, measurement and control functions." Ultimately, in 1963, U.S. Patent 3,081,379 issued from the 1956 application. Before the '379 patent issued, Mr. Lemelson filed a 1963 continuation-in-part ("CIP") application from the 1954 and 1956 applications, adding drawings and text and allegedly combining aspects of the two specifications. In 1972, he further augmented that specification by filing another CIP application, a so-called "common specification," that eventually became the basis for an additional sixteen patent applications filed between 1977 and 1993. Symbol III, 301 F.Supp.2d at 1153. Fourteen of the resulting patents are before us. Claim 12 of U.S. Patent 4,979,029, which resulted from one of those applications, is representative and reads as follows:

A method for inspecting an image field to determine if a select image phenomenon is present in said image field, comprising:

(a) scanning an image field containing at least one contrasting image portion which is detectable with an electronic scanning device,

(b) generating first electrical signals which vary in accordance with variations in detected contrasting image portions of the image field scanned (c) analyzing said first electrical signals and generating first information signals corresponding to the detected contrasting image portions of the image field scanned,

(d) electrically comparing said first information signals from recordings in a memory which are indicative of said select image phenomenon, and

(e) generating electrical signals indicative of the presence of said select image phenomenon in said scanned image field.

'029 patent, col. 68, ll. 6-24.

Symbol and its co-plaintiffs design, manufacture, and sell bar code scanners and related machine vision products, including laser and CCD bar code readers. Symbol III, 301 F.Supp.2d at 1150. In 1998, Symbol's customers began receiving letters from Lemelson stating that the use of the plaintiff's products infringed various Lemelson patents. Symbol claims that it would be forced to indemnify those customers should any of the patents be found to be valid and infringed. In response, Symbol filed a declaratory judgment action against Lemelson seeking a judgment that the asserted patents* are not infringed by Symbol or its customers. It also sought a judgment that the patents are invalid under 35 U.S.C. § 101 for lack of utility; § 102 for anticipation; § 103 for obviousness; § 112 for failure to comply with the written description, enablement, and definiteness requirements; and for double patenting. Symbol also asserted that the patents were unenforceable for prosecution laches and inequitable conduct before the U.S. Patent and Trademark Office ("PTO"). Id. at 1151.

Previously, Lemelson had moved to dismiss the case, arguing that there was no case or controversy between the parties and that Symbol's cause of action for prosecution laches failed to state a claim upon which relief could be granted. The district court concluded that there was a sufficient case or controversy, but it dismissed Symbol's prosecution laches claim. Symbol Techs., Inc. v. Lemelson Med., Educ. & Research Found., No. 99-CV-0397, 2000 WL 33709453 (D.Nev. Mar.21, 2000) ("Symbol I").

Symbol filed an interlocutory appeal to this court under 28 U.S.C. § 1292(b), and we agreed to consider "whether, as a matter of law, the equitable doctrine of laches may be applied to bar enforcement of patent claims that issued after an unreasonable and unexpected delay in prosecution even though the applicant complied with pertinent statutes and rules." Symbol Techs., Inc. v. Lemelson Med., Educ. & Research Found., 277 F.3d 1361, 1363 (Fed.Cir.2002) ("Symbol II"). We reversed the district court's judgment, rejecting Lemelson's arguments that prosecution laches was limited to claims arising out of interference proceedings and that the passage of the 1952 Patent Act with its provisions for filing continuation and continuation-in-part applications foreclosed the application of laches. Id. at 1365-66. We held instead that Symbol's defense of prosecution laches was legally viable, and we remanded the case to the district court for further proceedings to determine the relevant facts.

Upon remand, the court conducted a bench trial from November 2002 to January 2003, followed by post-trial briefing that concluded in June 2003. In a decision issued in January 2004, the court held that Lemelson's patents were indeed unenforceable due to prosecution laches, invalid for lack of enablement, and not infringed by Symbol's products. First, although acknowledging that Symbol had not demonstrated that Lemelson intentionally stalled in securing the patents, the court stated that "unreasonable delay alone is sufficient to apply prosecution laches without the requirement that Lemelson intended to gain some advantage by the delay." Symbol III, 30 F.Supp.2d at 1156 (citing In re Bogese II, 303 F.3d 1362, 1369 (Fed.Cir.2002)). The court also applied the doctrine of prosecution laches because Symbol had presented "strong evidence ... of intervening private and public rights." Id. at 1157. Accordingly, it held that "Lemelson's 18 to 39 year delay in filing and prosecuting the asserted claims under the fourteen patents-in-suit ... was unreasonable and unjustified and that the doctrine of prosecution laches renders the asserted claims unenforceable." Id. at 1155.

Next, the court determined whether the various claims in suit were entitled to the filing date that Lemelson claimed. Specifically, Lemelson asserted that sixty-eight of the asserted patent claims that shared the "common specification" were entitled to priority from the 1963 application which in turn claimed priority from the 1954 and 1956 applications. Thus, Lemelson argued that some claims were entitled to a 1954 filing date and others to a 1956 filing date. However, the court rejected those arguments, finding that Lemelson had not shown that the 1963 application was related to the earlier filings in a manner sufficient to justify its status as a CIP application. It determined that Lemelson "failed to prove that the 1963 Application is a continuation-in-part of the 1954 Application as required under § 120, nor has Lemelson demonstrated the relationship of the 1954 Application to the 1963 Application as required by Patent Office Rule 78(a)." Id. at 1161. The court thus held that Lemelson could not rely on the 1954 or 1956 applications as intrinsic evidence for purposes of claim construction and that the...

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