Hemstreet v. Computer Entry Systems Corp.

• Decision Date: 22 June 1990
• Docket Number: No. 89 C 5935.,89 C 5935.
• Citation: 16 USPQ 2d 1204,741 F. Supp. 1308
• Parties: Harold S. HEMSTREET, Plaintiff, v. COMPUTER ENTRY SYSTEMS CORPORATION, a Delaware corporation, Defendant.
• Court: U.S. District Court — Northern District of Illinois

741 F. Supp. 1308

16 USPQ 2d 1204

Harold S. HEMSTREET, Plaintiff, v. COMPUTER ENTRY SYSTEMS CORPORATION, a Delaware corporation, Defendant.

No. 89 C 5935.

United States District Court, N.D. Illinois, E.D.

June 22, 1990.

Leonard M. Ring, Leonard M. Ring & Associates, Edward D. Manzo, Cook, Egan, McFarron & Manzo, Ltd., Chicago, Ill., for plaintiff.

Terry Rose Saunders, Susman, Saunders & Buehler, Chicago, Ill., Gaynell C. Methvin, Thomas L. Crisman, Johnson & Gibbs, James D. Petruzzi, Dallas, Tex., for defendant.

MEMORANDUM OPINION

BRIAN BARNETT DUFF, District Judge.

Harold Hemstreet owns two patents for a device which is capable of automatically reading and sorting written documents. Various companies manufacture such optical character readers, or OCR's; Mr. Hemstreet has licensed some of those companies, among them International Business Machines, Inc. (IBM) and Recognition Equipment, Inc. (REI). Others, such as Computer Entry Systems Corp, (CES),¹ the defendant in this case, are currently involved in legal disputes with him regarding his rights under the patents. Still others, it may be presumed, are manufacturing OCR's with impunity.² CES claims that whether or not Mr. Hemstreet's claim of infringement is valid, he is too late to bring this suit. This court finds that the memoranda, affidavits and other evidence submitted by the parties clearly demonstrate that CES is entitled to summary judgment on each of Mr. Hemstreet's claims.

I. Summary Judgment Standard

The law governing summary judgment is well settled, and requires only a brief recitation here. Rule 56(c) of the Federal Rules of Civil Procedure requires the court to grant a motion for summary judgment "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." When there is enough evidence in favor of the non-movant that a jury could reasonably return a verdict for that party, a "genuine issue" exists and summary judgment is not appropriate. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986). Questions about the sufficiency of the evidence submitted with the summary judgment motion should be resolved in favor of the non-movant. Rodeo v. Gillman, 787 F.2d 1175 (7th Cir.1986). See also, generally, Celotex Corp. v. Catrett, 477 U.S. 317, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986).

II. Laches

CES's first argument in support of its motion for summary judgment is that Mr. Hemstreet is barred, by the equitable doctrine of laches, from bringing his claim now. The equitable doctrine of laches, once established, allows an infringer to bar the patent holder filed the suit. Jamesbury Corp. v. Litton Industrial Products, Inc., 839 F.2d 1544, 1550 (Fed.Cir.1988). The defense of laches is available in patent actions if the alleged infringer establishes that:

1) Plaintiff unreasonably and inexcusably delayed in asserting its claim for patent infringement; and

2) Plaintiff's delay in bringing an action resulted in material prejudice to the defendant. (The longer the delay, the less need to show specific prejudice).

Leinoff v. Louis Milona & Sons, Inc., 726 F.2d 734 (Fed.Cir.1984). See also Jamesbury, 839 F.2d at 1551-52. CES has offered facts to support each of these propositions, and Mr. Hemstreet has failed to successfully rebut them.

The crucial fact here is that Mr. Hemstreet had, in 1983, all the facts pertaining to CES's alleged infringement that he had in 1989, when he finally filed suit. Yet Mr. Hemstreet argues that he didn't really know whether CES equipment infringed his patents until he took the deposition of John Guthrie, CES's Vice President of Engineering, after he had already filed this suit. Hemstreet's Memorandum in Opposition to Defendant's Motion for Summary Judgment at 3.³ Mr. Hemstreet cannot have it both ways. Either he knew enough in 1983, and should have filed suit then, or he didn't and therefore should not have filed suit in 1989.

Following are some of the undisputed facts in this case. In July, 1983, Mr. Hemstreet wrote to Amer-O-Matic Corp., a CES subsidiary (see fn. 1, above), accusing it of manufacturing equipment which infringed Mr. Hemstreet's patents. Because the contents and interpretation of the letter is critical to both parties' arguments, as well as this court's holding, this court sets it forth in full:

Gentlemen:

We represent Harold S. Hemstreet, owner of the above-listed patents granted January 23, 1973, both of which are entitled "METHOD AND APPARATUS FOR IDENTIFYING LETTERS, CHARACTERS, SYMBOLS, AND THE LIKE."

On information and belief, your company manufactures equipment which infringes the above patents.

Mr. Hemstreet stands ready to negotiate a reasonable settlement and to license you under the patents.

We have previously licensed IBM and REI. In the case of REI, it was necessary to litigate before a jury, and settlement was reached in the course of trial. At present, we are litigating another action for infringement of said patents in the United States District Court for the Northern District of Illinois. That case, filed by us on November 17, 1981, is entitled "Harold S. Hemstreet vs. Burroughs Corporation, No. 81 6412." The action is pending before Judge William T. Hart of that Court.

Enclosed are copies of the patents. We would appreciate hearing from you after you have studied them.

Defendant's Undisputed Fact # 41, Harold Hemstreet Deposition (HH Dep.) Ex. 17A.⁴

Mr. Hemstreet claims, in support of another argument, which this court will address below, that "the July 1, 1983 letter put CES on notice of a claim for infringement .... Since a claim was made against CES, litigation or settlement was part of Hemstreet's clear pattern of conduct." Hemstreet's Local Rule 12 Statement, # 44. If that is so, why did Mr. Hemstreet wait over six years before continuing on his "clear pattern of conduct"? Mr. Hemstreet has not offered, and this court cannot postulate, an acceptable explanation.

The Federal Circuit, as well as various other Circuit Courts, has adopted a presumption in cases in which laches is asserted as a defense to a claim of patent infringement which seems reasonable to this court. The statute of limitations for patent actions, 35 U.S.C. § 286 (1952) is six years. The Federal Circuit uses that number as its yardstick in determining whether a patent owner's delay in bringing suit for infringement has prejudiced the defendant. Where the patent owner's delay exceeds six years, a rebuttable presumption of both unreasonableness on the part of the patentee and prejudice to the alleged infringer arises. Leinoff, 726 F.2d at 741-42; see also Jamesbury, 839 F.2d at 1552. See also Baker Manufacturing Co. v. Whitewater Manufacturing Co., 430 F.2d 1008, 1009-10 (7th Cir.1970); Olympia Werke Aktiengesellschaft v. General Electric, 712 F.2d 74, 77 (4th Cir.1983).

Once the presumption arises, as this court holds it has here, the burden shifts to the plaintiff to show that its delay was neither unreasonable nor prejudicial. Mr. Hemstreet sent the letter to CES in July, 1983. He filed suit in August, 1989. Mr. Hemstreet is unable to carry his burden. Mr. Hemstreet's claim that the 1983 letter, to which CES did not respond, upon which he never `followed-up', and after which he remained silent for over six years, was sufficient to put CES on notice that he intended to pursue his claim of infringement. Mr. Hemstreet argues that his delay in filing suit, or otherwise communicating with CES regarding his rights under the patent, is excusable because he was involved in other litigation (involving his rights under the patents) between 1983 and 1989. Hemstreet v. Burroughs Corporation and Harris Trust and Savings Bank, Civil Action 81 C 6412. Hemstreet's Local Rule 12 Statement, Further Undisputed Facts ## 74-90.⁵ This court disagrees with both those contentions.

It is true that involvement in other litigation against one alleged infringer can sometimes excuse the failure to sue another alleged infringer. That limited `escape clause' does not, however, give a patent holder carte blanche to sit on his rights indefinitely. As the court stated in Jamesbury, "in order to excuse delay based on other litigation, the patentee must give notice to the alleged infringer of the existence of the other litigation and of an intent to enforce its rights against the infringer at the conclusion of the other litigation." 839 F.2d at 1533 (footnote omitted). See also Hottel Corp. v. Seaman Corp., 833 F.2d 1570 (Fed.Cir.1987); A.C. Aukerman Co. v. Miller Formless Co., Inc., 693 F.2d 697, 699 (7th Cir.1982) (the excuse of pending litigation is "acceptable only if other alleged infringers are given notice of the prior suit citation omitted and are informed of the patentee's intent to pursue litigation against them at the close of the earlier suit. Citation omitted.)

Mr. Hemstreet did notify CES of the Burroughs litigation in his July, 1983 letter. Nonetheless, that letter gave rise to no more than an inference that Mr. Hemstreet intended to sue to enforce his rights under the patents, either during, or after the close of, the Burroughs litigation. Thus, this court finds that Mr. Hemstreet has fallen short of the standard for excusable delay based upon other litigation. Accordingly, this court agrees with CES that Mr. Hemstreet is barred, by the doctrine of laches, from recovering any damages from CES which accrued prior to August 9, 1989, the date he filed this suit.

III. Estoppel

The doctrine of laches does much to defeat Mr. Hemstreet's claim against CES, but it does not destroy it entirely. If laches were the only argument CES advanced, Mr. Hemstreet would still be entitled to collect damages which arose after he initiated this suit. Laches is not, however, the only weapon in CES's arsenal. CES...