Laitram Corp. v. NEC Corp.
| Decision Date | 31 December 1991 |
| Docket Number | No. 91-1108,91-1108 |
| Citation | 952 F.2d 1357,21 USPQ2d 1276 |
| Parties | The LAITRAM CORPORATION, Plaintiff-Appellant, v. NEC CORPORATION, NEC Information Systems, Inc., and Sears, Roebuck and Company, Defendants-Appellees. |
| Court | U.S. Court of Appeals — Federal Circuit |
Timothy J. Malloy, of McAndrews, Held & Malloy, Chicago, Ill., argued for plaintiff-appellant. With him on the brief were Lawrence M. Jarvis, Gregory J. Vogler, and Jean Dudek Kuelper. Of counsel were Phillip A. Wittmann and Steven Usdin, of Stone, Pigman, Walther, Wittmann & Hutchinson, New Orleans, La., and Barry L. LaCour and Mark T. Drapanas, of The Laitram Corp., Harahan, La.
John M. Calimafde, of Hopgood, Calimafde, Kalil, Blaustein & Judlowe, New York City, argued for defendants-appellees. With him on the brief were Marvin N. Gordon, Charles Quinn and David H. Kagan. Of counsel was James D. McMichael, of Liskow & Lewis, New Orleans, La.
Before NEWMAN, ARCHER and RADER, Circuit Judges.
In a suit for patent infringement filed by The Laitram Corporation against NEC Corporation, NEC Information Systems, Inc., and Sears, Roebuck and Company (collectively "NEC"), the grant of partial summary judgment in favor of NEC was certified for immediate appeal. 1
The question raised is whether amendments made to patent claims during reexamination of the patent are substantive as a matter of law, when the amendments are made following a rejection based on prior art. We conclude that there is no per se rule. It must be determined whether the claims are substantively changed, on consideration of the facts of the case.
Accordingly, the grant of partial summary judgment is reversed. The case is remanded for further proceedings.
United States Patent No. 3,952,311 (the '311 patent) entitled "Electro-Optical Printing System", inventor James M. Lapeyre, was issued on April 20, 1976 and is assigned to The Laitram Corporation. The patent is directed to high speed electro-optical printing, whereby printed characters are produced on a sheet of radiation sensitive material. As described in the specification, radiation emitting elements are arrayed in a straight line and the radiation sensitive material is moved past the emitter array at constant speed, in a direction perpendicular to the line of the array. As the radiation sensitive material moves past the array, certain of the emitters are activated so as to produce type quality alpha-numeric characters.
A request for reexamination was filed by a third party, not involved in this suit. The patent examiner determined that the request raised a substantial new question of patentability 2 as to claims 1 and 2, the only claims of the original '311 patent. During the ensuing reexamination the examiner rejected claims 1 and 2 on the ground of obviousness, 35 U.S.C. § 103, in view of certain newly cited references. Claim 2 was also rejected as anticipated, 35 U.S.C. § 102(b), by one of the newly cited references.
Laitram filed a response in which it amended claims 1 and 2, and added new claims 3 through 27 containing additional limitations. Claims 1 and 2 follow, wherein the words added during reexamination are italicized and the words deleted are shown in brackets:
1. An electro-optical printing apparatus for printing type quality alpha-numeric characters at high speed on a surface of a photosensitive recording material, said apparatus comprising:
a plurality of rapidly reacting radiation emitters each being capable of emitting radiation at wavelengths to which said surface is sensitive, said emitters being disposed in an array along a substantially straight line, said array being a plurality of rows of said radiation emitters;
means for moving said recording material in a single direction substantially perpendicular to said straight line with its surface adjacent said array, and at a substantially constant speed relative to said array and;
each of said emitters being positioned to irradiate a different area of said recording surface, the different areas of said surface irradiated by each of the said emitters being arranged in an overlapping relationship with one another and said plurality of emitters being of sufficient number to print said type quality alpha-numeric characters.
2. A method of electro-optically printing type quality alpha-numeric characters at high speed on the recording surface of a photosensitive material, said method comprising the steps of:
providing relative movement along a single coordinate substantially perpendicular to said array at substantially constant speed between said recording surface and said emitters, and
coordinating the predetermined periods of time in which each of said plurality of emitters [are] is selectively energized with said constant speed of said relative movement between said emitters and recording surface so that alpha-numeric character images are recorded on said recording by exposure of said selected [ares] areas of said recording surface by said emitted radiation, said step of coordinating including the steps of synchronously generating a first data signal which programs the order [to] of energization of said emitters and a second data signal which determines the duration of the energization period of said emitters, and employing said first and second data signals to effect energization of said emitters so as to record said alpha-numeric character images of said type quality at said high speed.
Laitram filed a detailed analysis of each of claims 1 through 27 in light of the newly cited references, pointing out how the teachings of the references differed from the '311 invention. For example, Laitram explained that the movement of the paper as shown in the newly cited Baylis reference was in more than one direction relative to the emitter array, whereas the '311 specification made clear that the movement of the paper in the claimed invention was along a single perpendicular coordinate. Laitram presented additional arguments as to perceived deficiencies in other references.
The examiner allowed claims 1 and 2 as amended and claims 3 through 27 as added, giving the following reason:
The prior art fails to teach an electro-optical printing apparatus for printing type quality characters including a plurality of emitters disposed in an array along a substantially straight line[,] a recording surface moved in a single direction at a substantially constant speed in a direction substantially perpendicular to the line of the emitter array[,] and means for selectively coordinating the activation of the emitters for predetermined periods of time in combination with the other elements recited in the claims.
Laitram argued to the district court that the amendment of claims 1 and 2 to include the added words was done to "more particularly define" the invention, that the added words stated inherent details and did not change the scope of the claims. The district court did not decide the question of whether the changes to claims 1 and 2 were in fact substantive, or discuss the scope of these claims before and after amendment. The court ruled summarily that any amendment to overcome a rejection on prior art is substantive as a matter of law.
Reexamination provides a mechanism for enabling the Patent and Trademark Office to review and correct an initial examination. 3 Thus reexamination is conducted afresh, without the burdens and presumptions that accompany litigation of an issued patent. In re Etter, 756 F.2d 852, 855-59, 225 USPQ 1, 3-6 (Fed.Cir.) (en banc ), cert. denied, 474 U.S. 828, 106 S.Ct. 88, 88 L.Ed.2d 72 (1985). The Commissioner, having determined that a substantial new question of patentability is raised, may order reexamination of the patent, 35 U.S.C. § 304, and conduct reexamination proceedings using the same procedures as in initial examination, 35 U.S.C. § 305.
The issue certified on this appeal requires determination of whether, as a matter of law, a claim is deemed substantively changed when it is amended on reexamination following a rejection based on prior art. Recovery of damages for an asserted infringement during the period between the date of issuance of the original patent and the date of issuance of the reexamined patent requires that the original and reexamined claims be "identical". 4 Whether claims are "identical" when some of the words are changed has received substantial attention in this court's precedent.
In Seattle Box Co. v. Industrial Crating & Packing, Inc., 731 F.2d 818, 827-28, 221 USPQ 568, 575 (Fed.Cir.1984), this court held that the word "identical" in § 252 "means, at most, 'without substantive change' " (emphasis in original). In Seattle Box the court applied that definition to the reissued claim and concluded that the limitation "substantially equal to or greater than" was a substantive change from the limitation "greater than" in the original claim. The court observed that this change was "not a matter of a mere clarification of language to make specific what was always...
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