Symbol Technologies, Inc. v. Opticon, Inc.

• Decision Date: 14 June 1991
• Docket Number: No. 90-1409,90-1409
• Citation: 19 USPQ2d 1241,935 F.2d 1569
• Parties: , 33 Fed. R. Evid. Serv. 1381 SYMBOL TECHNOLOGIES, INC., Plaintiff-Appellee, v. OPTICON, INC., and Opto Electronics, Defendants-Appellants.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1569

935 F.2d 1569

19 U.S.P.Q.2d 1241, 33 Fed. R. Evid. Serv. 1381

SYMBOL TECHNOLOGIES, INC., Plaintiff-Appellee, v. OPTICON, INC., and Opto Electronics, Defendants-Appellants.

No. 90-1409.

United States Court of Appeals Federal Circuit.

June 14, 1991.

Rehearing Denied Sept. 6, 1991.

Arnold Sprung, Sprung Horn Kramer & Woods, Tarrytown, N.Y., argued for plaintiff-appellee. With him on the brief were Nathaniel D. Kramer and Ira J. Schaefer.

Jeffrey A. Schwab, Abelman Frayne Rezac & Schwab, New York City, argued for defendants-appellants. With him on the brief was Michael Aschen.

Before NIES, Chief Judge, and NEWMAN, and CLEVENGER, Circuit Judges.

CLEVENGER, Circuit Judge.

Symbol Technologies, Inc., (Symbol) sued Opticon, Inc., and its Japanese parent Opto Electronics, (collectively hereinafter Opticon), in the United States District Court for the Southern District of New York for infringement of certain claims of United States Patent Nos. 4,387,297 ('297 patent), 4,593,186 ('186 patent), and 4,409,470 ('470 patent).

Symbol alleged that Opticon's MSH-840, MSH-850 and MSH-860 devices were infringing. Opticon denied infringement and filed a counterclaim for a declaratory judgment that the '297 and '186 patents are invalid and unenforceable. Following a non-jury trial, the District Court concluded that the '297 and '186 patents were not proved invalid or unenforceable, and found infringement. ¹ Symbol Technologies, Inc. v. Opticon, Inc., 17 USPQ2d 1737, 1990 WL 58887 (S.D.N.Y.1990). The court entered a liability judgment for Symbol.

Opticon appeals the judgment of the District Court. This Court has jurisdiction under 28 U.S.C. Sec. 1292(c)(2) (1988) to entertain Opticon's appeal. Because no reversible error was committed, we affirm.

I. BACKGROUND

The patents relate to devices that employ lasers to read bar code symbols, and methods of their use. The application that issued as the '297 patent was filed on February 29, 1980. In the first official action, the examiner required restriction to one of seven species identified as Groups I-VII. The applicants elected Group I claims directed to a light-weight laser scanning head, which matured into the '297 patent.

The '297 patent specification refers to two types of previously known laser scanning devices. The first type, often mounted in supermarket and other checkout counters, requires a user to bring the symbol-bearing object to the stationary scanner. Its usefulness is limited to decoding symbols on objects that can be brought to the device. The second type uses a wand or pen that emits a scanning laser beam. The user places the pen in physical contact with the object, then manually drags the pen across the symbol. This second type requires user training because successful decoding depends on pen angle, pressure, and speed of passage as the pen is dragged across the bar code. Multiple passes of the pen are often required to achieve a single reading. Moreover, the tips of pen scanners tend to scar the bar codes and are not useful on wax coated containers, such as milk cartons, on soft products, such as bagged potato chips, or on reflective aluminum cans.

In contrast, the invention claimed in the '297 patent is a portable, light-weight laser scanning head that operates without physical contact with the bar code. See Figure 1. In gun-like fashion, the user sights the bar code, unobstructed by the device, then depresses a trigger to initiate decoding. Each time the trigger is depressed, the hand-held device sweeps a scanning laser beam laterally across the bar code by use of mirrors. The examiner considered this "aim and shoot" feature to be a novel distinguishing characteristic of the claimed invention over the prior art. All of the asserted '297 patent claims depend on claim 1, reprinted in the Appendix, which in pertinent part claims the "aim and shoot" feature as:

(c) miniature optic means ... to permit the user to conveniently register the laser light beam on the symbol by sighting the symbol along a direct line of sight which does not pass through the housing;

(d) miniature scanning means mounted in the light path and in the interior space of the housing for cyclically sweeping the laser light beam across the bar code symbol for reflection therefrom;

* * * * * *

(h) handle means for normally supporting the light-weight laser scanning head in a non-contacting relationship with the symbol during reading thereof; and (i) manually actuatable trigger means on the housing for initiating reading of the symbol each time the trigger means is manually actuated by the user.

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

Before the '297 patent issued, the applicants filed a divisional application directed to the originally non-elected Group VI claims, described in the restriction as a "method" of scanning, sensing and decoding bar code symbols. Thereafter, the applicants filed a continuation of the divisional application, which eventually issued as the '186 patent. The '186 patent contains apparatus claims 1-10 and method claims 11-15, with the method claims closely corresponding to the original Group VI claims. The broadest asserted apparatus and method claims, reprinted in the Appendix, both require a "trigger" and "repetitively" scan "the directed laser beam across each symbol for reflection therefrom." Thus, the '186 patent claims a system that repetitively scans and senses a bar code symbol each time a user depresses the trigger. Each symbol is decoded from repetitive rather than single scans, thereby increasing the likelihood of achieving accurate decoding even for poorly printed symbols. In addition, claim 1 and claim 11 include limiting language for "determining a successful decoding of each symbol," and for "non-manually terminating the reading of each symbol upon the determination of the successful decoding thereof." See Appendix. Thus, the invented system alerts the user and automatically stops scanning when the symbol is decoded, permitting rapid and sequential decoding of multiple objects.

The same applicants claimed an advance over the invention of the '297 patent in an application filed on January 25, 1982, which later issued as the '470 patent. The '470 patent specification explains that, because the scanning laser beam of the invention claimed in the '297 patent passes through the inside of the device, "a great deal of interior 'dead' space within the head" is required in order to accommodate the scanning beam.

In contrast, the '470 patent discloses a scanning head with a raised rear window that emits the laser beam over the outside top of the device rather than inside its housing. Claim 1 of the '470 patent, reprinted in the Appendix, includes:

(g) window means mounted on the housing, and having a light-transmissive window at the rear region in close adjacent confronting relationship with the scanning means thereat, said window being configured and positioned in the light path of said at least one swept beam to permit the latter to pass through the window and unobstructedly travel exteriorly of and past the front and intermediate body regions of the housing.

whereby the field of view of the swept beam is substantially independent of the predetermined width of the housing due to its exterior transmission outside of the front and intermediate body regions of the housing.

Thus, since the device no longer must accommodate the sweep width of the scanning beam, the invention allows a narrowing of the body of the device, with a corresponding reduction in overall size and weight.

II. INFRINGEMENT

Opticon's first contention on appeal is that Symbol presented insufficient evidence during its case-in-chief to establish a prima facie showing of infringement. Symbol, as the party asserting infringement, bore the burden of proof by a preponderance of the evidence. Hughes Aircraft Co. v. United States, 717 F.2d 1351, 1361, 219 USPQ 473, 480 (Fed.Cir.1983).

To prove infringement, Symbol offered the expert testimony of Mr. Edward Barkan (Barkan), named as a co-inventor in each of the three patent applications. The court admitted into evidence charts and drawings used by Barkan to demonstrate infringement of the asserted claims, each of which contains "means plus function" limitations as permitted under 35 U.S.C. Sec. 112 p 6 (1988). The charts show each asserted claim broken down by limitation, with one or more numbers placed next to each limitation. Corresponding numbers identify various structural parts of the accused devices depicted in the drawings. Using the exhibits as a guide, Barkan stated that in his opinion each numbered claim limitation reproduced on the charts was met by the corresponding numbered structure of the device shown on the drawings. Furthermore, Barkan testified that his "understanding of the patent claims [was] based upon the claims, as well as the specifications, as well as statements made during the prosecution history."

Determination of patent infringement is a two-step process: "the meaning of the claims must be learned from a study of all relevant patent documents; and the claims must be applied to the accused structures." Caterpillar Tractor Co. v. Berco, S.P.A., 714 F.2d 1110, 1114, 219 USPQ 185, 187 (Fed.Cir.1983). Opticon contends that, under Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 934, 4 USPQ2d 1737, 1739 (Fed.Cir.1987), cert. denied, 485 U.S. 961, 108 S.Ct. 1226, 99 L.Ed.2d 426 (1988), a party asserting infringement of claims with "means plus function" limitations must demonstrate to the fact-finder how each structure in the accused device, asserted to meet a functional claim limitation, is the same as or equivalent to a corresponding structure disclosed in the specification. Opticon cites the following passage from Pennwalt for support:

Where the issue is raised, it is part of the ultimate burden of proof of the patent owner to establish, with respect to a claim limitation in...