Lemelson v. TRW, Inc.
| Decision Date | 12 April 1985 |
| Docket Number | No. 84-855,84-855 |
| Citation | 225 USPQ 697,760 F.2d 1254 |
| Parties | Jerome H. LEMELSON, Appellant, v. TRW, INC., and Conco, Inc., Appellees. Appeal |
| Court | U.S. Court of Appeals — Federal Circuit |
Richard J. Egan, Baldwin, Egan, Walling & Fetzer, Cleveland, Ohio, for appellant. With him on the brief was William C. McCoy, Jr., Pearne, Gordon, Sessions, McCoy, Granger & Tilberry, Cleveland, Ohio.
Ronald L. Wanke, Wood, Dalton, Phillips, Mason & Rowe, Chicago, Ill., for appellees. With him on the brief were Stanley C. Dalton, Wood, Dalton, Phillips, Mason & Rowe, Chicago, Ill., Hal D. Cooper, Jones, Day, Reavis & Pogue, Cleveland, Ohio, and Philip K. Fitzsimmons, Shlesinger, Fitzsimmons & Shlesinger, Rochester, N.Y.
Before DAVIS, BENNETT and SMITH, Circuit Judges.
This is an appeal from the order of the United States District Court for the Northern District of Ohio, Eastern Division, 1 granting the joint motion for summary judgment brought by defendants TRW, Inc., and Conco, Inc., and defendant-intervenor Hartman Metal Fabricators, Inc. (hereinafter collectively designated TRW). 2 The order was based on a determination that U.S. Patent No. 3,389,814 (the '814 patent) and U.S. Patent No. 3,486,640 We vacate the order of the district court and remand for continued proceedings consistent with this opinion. 4
(the '640 patent) issued to intervenor-appellant Jerome H. Lemelson, 3 are invalid under 35 U.S.C. Sec. 102(b) (1982) due to a "hiatus" in prosecution disclosure of the claimed inventions, resulting in the preclusion of the asserted patents from entitlement to the filing dates of various parent applications, which filing dates could have antedated admitted public uses and offers for sale.
Both the '814 and '640 patents relate to specific aspects of an automatic material handling system, shown below in Fig. 1 of the '814 patent from which unnecessary reference characters have been deleted. Loads 14 are transported to and from selected storage locations in a vertical and horizontal array of open-ended bins 18a by a load carrier 15 horizontally movable before the array on an overhead track 17.
The load carrier includes a carriage 16 which supports a horizontally rotatable and vertically positionable elevator 20. The elevator carries a load support 23 which can be moved horizontally into and out of the bins to pick up or set down articles. The movements of the carriage, elevator, and load support are governed by automatic controls.
The claims of the '814 patent recite such a system in which the automatic controls include sensors on the load carrier to detect the presence or absence of loads on the load support or within a bin being entered, thereby permitting the controls to select appropriate movements of the load carrier. 5 The claims of the '640 patent recite such a system in which the automatic controls include control elements that move with the load carrier parallel to the open ends of the storage bins. First and second actuators associated with each storage bin actuate the control elements as the load carrier approaches a selected storage bin. The automatic controls responsive to the first actuator reduce the speed of the load carrier in advance of arriving at the selected bin. In response to the second actuator the controls then stop the load carrier precisely at that bin. 6
The sensors of the '814 patent and the pair of actuators of the '640 patent produce electrical signals which register in the automatic controls the location and status of the load carrier being regulated. These signals may be generated in alternative manners depending on the nature of the sensors and actuators: photoelectrically, using reflectors and photoelectric cells, or electromechanically, using limit switches and limit pins.
The original application disclosing the inventions now claimed in the '814 and '640 patents was U.S. Patent Application S.N. 449,874, filed July 28, 1954, and entitled "Automatic Production Systems" (the 1954 application). It was initially subjected to a requirement to restrict examination of the application to one of three distinct inventions identified by the examiner. Lemelson in response elected to prosecute the Group II set of claims directed to an article transfer device, which, it is not disputed, included both the load sensing means and the dual reflectors now claimed in the '814 and '640 patents, respectively.
Subsequently, in a second office action, the examiner stated that the elected Group II set of claims included "claims specifically directed to ... plural species of controls." Since claims generic to those species were not considered by him to be patentable, Lemelson was "required to elect a single disclosed species" to which his claims would be restricted if no generic claim were ultimately allowed. The examiner was of the opinion that following the required election, most of the matter disclosed in the application would be "superfluous to the elected embodiment," and thus further required the applicant to indicate those portions of the specification that pertained thereto.
Lemelson in response made his election, which was considered incomplete by the examiner. Prosecution continued through several claim substitutions to a fifth office action in 1959. This action, while continuing to note the failure of Lemelson to restrict disclosure in the application to the subject matter elected for prosecution, entered a final rejection of all pending claims.
Lemelson appealed the final rejection and in 1960 cancelled the entire specification of the 1954 application and its then pending claims, substituting a substantially streamlined new specification and new claims. The 1954 application was abandoned on October 18, 1961.
Prior to that abandonment, however, Lemelson requested that the United States Patent and Trademark Office (Patent Office) prepare and file on his behalf a certified copy of his original 1954 application. According to Lemelson, this met the requirements of then operative Rule 147 7 for effecting a valid filing without his signature of a divisional application entitled under 35 U.S.C. Sec. 121 8 to "the benefit of the filing date of the original [1954] application." The result was U.S. Patent Application S.N. 152,702 (the Rule 147 divisional application), which was accorded a filing date of October 17, 1961.
Simultaneously with the request to prepare the divisional application, Lemelson instructed the Patent Office to cancel all claims not pertaining to the Group I claims designated by the examiner in the parent 1954 application as being directed to an automatic production system. These claims were accordingly elected for prosecution While the Rule 147 divisional application was yet pending, Lemelson filed continuation-in-part applications that did contain claims relating to these features. These were U.S. Patent Application S.N. 430,075 filed on February 3, 1965, and U.S. Patent Application S.N. 446,326 filed April 7, 1965 (the CIP applications). U.S. Patent Application S.N. 561,307, filed June 7, 1966, a continuation of the former, matured into the '814 patent, while the '640 patent issued directly from the latter.
in the Rule 147 divisional application. It is not disputed that the elected automatic production system did not include a load sensing means or dual reflectors, features now claimed in the two patents in suit.
Triax admitted that devices embodying the inventions claimed in the '814 and '640 patents were on sale and in public use as early as 1963. As the CIP applications were filed more than one year after the admitted sale and public use, the entitlement of the CIP applications to earlier filing dates is crucial to the validity of the patents upon which this suit is premised. 35 U.S.C. Sec. 102(b).
This case was originally filed by Triax in 1973 and consolidated with two others by the Judicial Panel on Multidistrict Litigation the following year. In re Triax Company Patent Litigation, 385 F.Supp. 590, 185 USPQ 149 (J.P.M.D.L.1974).
On May 9, 1980, Triax filed a motion under Fed.R.Civ.P. 42(b) to separate certain issues for trial from others in the case. TRW, in opposing the motion, further requested leave to file a motion for summary judgment claiming in the words of the district court "that admissions made by the plaintiff in answers to interrogatories [had] ... disposed of issues of fact and [would] ... allow the court to determine the validity of the Lemelson patents as a matter of law." The Triax motion was denied on June 27, 1980, but TRW was invited to file a motion for summary judgment.
On October 21, 1980, the TRW motion was filed. It argued that "the inventions claimed by the two patents in suit were not continuously disclosed in a patent application pending before the U.S. Patent Office as required by 35 U.S.C. Sec. 120," because those inventions were "deliberately" cancelled by Lemelson from the 1954 application and the Rule 147 divisional application more than one year before the filing of the CIP applications. Triax responded on November 26, 1980. The district court, agreeing with TRW, granted the motion for summary judgment, and this appeal followed.
The court below stated that when required by the Patent Office to restrict the 1954 application to one elected species of controls, "Lemelson elected to prosecute the photoelectric cell method, including the dual reflector system, rather than the electromechanical method." 217 USPQ at 339. Based on this, it termed "voluntary" the cancellation from the 1954 application of disclosure of the inventions claimed in the patents in suit. Id. "Lemelson not only cancelled the subject matter which the Patent Office ordered restricted from the grandparent [1954] application ..., but he also voluntarily cancelled...
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