Symbol Techs. v. Lemelson Med. Educ. & Res. Found.

• Decision Date: 23 January 2004
• Docket Number: Nos. CV-S-01-701-PMP(RJJ) to CV-S-01-703-PMP(RJJ).,s. CV-S-01-701-PMP(RJJ) to CV-S-01-703-PMP(RJJ).
• Citation: 301 F.Supp.2d 1147
• Parties: SYMBOL TECHNOLOGIES, INC., et al., Plaintiffs, v. LEMELSON MEDICAL, EDUCATION & RESEARCH FOUNDATION, LIMITED PARTNERSHIP, Defendant. Cognex Corporation, Plaintiff, v. Lemelson Medical, Education & Research Foundation, Limited Partnership, Defendant. Telxon Corporation, Plaintiff, v. Lemelson Medical, Education & Research Foundation, Limited Partnership, Defendant.
• Court: U.S. District Court — District of Nevada

301 F.Supp.2d 1147

SYMBOL TECHNOLOGIES, INC., et al., Plaintiffs, v. LEMELSON MEDICAL, EDUCATION & RESEARCH FOUNDATION, LIMITED PARTNERSHIP, Defendant.

Cognex Corporation, Plaintiff, v. Lemelson Medical, Education & Research Foundation, Limited Partnership, Defendant.

Telxon Corporation, Plaintiff, v. Lemelson Medical, Education & Research Foundation, Limited Partnership, Defendant.

Nos. CV-S-01-701-PMP(RJJ) to CV-S-01-703-PMP(RJJ).

United States District Court, D. Nevada.

January 23, 2004.

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Eugene Wait, Wait Law Firm, Reno, NV, Charles Quinn, Jesse Jenner, Fish & Neave, Palo Alto, CA, for Plaintiff.

Ann Morgan, Jones Vargas, Reno State, NV, Elizabeth Fielder, Stephen Morris, Morris, Pickering & Sanner, Las Vegas, NV, Richard Lustiger, Victoria Curtin, Victoria Gruver Curtin, Scottsdale, AZ, for Defendant.

FINDINGS OF FACT AND CONCLUSIONS OF LAW

PRO, Chief Judge.

This action commenced with the filing of separate Complaints by Symbol Technologies, Inc., Accu-sort Systems, Inc., Intermec Technologies Corp., Metrologic Instruments, Inc., PSC Inc., Teklogix Corp. and Zebra Technologies Corp. (collectively "Symbol") and Cognex Corp. ("Cognex"), for declaratory judgment pursuant to 28 U.S.C. § 2201(a) (1994), against Lemelson Medical, Education & Research Foundation, Limited Partnership ("Lemelson"). The Complaints filed on behalf of Symbol and Cognex sought a judgment that fourteen patents-in-suit¹ are invalid, unenforceable, and not infringed by Symbol or Cognex, or their customers. These two cases were consolidated on March 21, 2000(# 44).

Following extensive pretrial proceedings and an interlocutory appeal to the United States Court of Appeals for the Federal Circuit, these consolidated actions proceeded to a bench trial conducted from November 18, 2002, through January 17, 2003, followed by five and one-half months of post-trial briefing which concluded on June 30, 2003.

BACKGROUND

Lemelson claims to be the assignee of approximately 185 unexpired patents and many pending patent applications of the late Jerome H. Lemelson. The patents-in-suit generally involve machine vision and automatic identification bar code technology which Lemelson maintains are entitled to the benefit of the filing date of two Lemelson patent applications filed in 1954 and 1956.

Plaintiffs Symbol and Cognex design, manufacture and sell bar code scanners and machine vision products, respectively. In and prior to 1998, customers of Symbol and Cognex began receiving letters from Lemelson stating that the use of Symbol and Cognex products infringed various Lemelson patents. Symbol and Cognex claim that they will be forced to indemnify their customers should any of the Lemelson patents be found to be infringed. As a result, Symbol and Cognex filed this action seeking a declaration that uses of their bar code scanners and machine vision systems and products do not infringe the Lemelson patents-in-suit. Symbol and Cognex also seek judgment that the patents-in-suit are invalid under 35 U.S.C. § 101 for lack of utility; 35 U.S.C. § 102 for anticipation; 35 U.S.C. § 103 for obviousness; 35 U.S.C. § 112 for failure to comply with the written description, enablement and definiteness requirements; and for double patenting. Additionally, Symbol and Cognex seek judgment that the patents-in-suit are unenforceable for prosecution laches, and due to Lemelson's inequitable conduct in securing the patents-in-suit from the U.S. Patent and Trademark Office.

Lemelson has counterclaimed for declarations that Symbol and Cognex infringed the patents-in-suit by contributory infringement and inducing infringement. Lemelson does not seek infringement damages from Symbol or Cognex by reason of their sale of goods to third parties, but Lemelson has filed infringement actions against various third parties or has reserved the right to do so. Additionally, Lemelson requests that the Court award attorneys' fees and costs under the "exceptional case" provisions of 35 U.S.C. § 285.

Based upon the evidence adduced at trial, the Admitted Facts² set forth in the Joint Pretrial Order (# 355), and the arguments presented in the post-trial briefs the Court hereby makes the following Findings of Fact and Conclusions of Law:

I. JURISDICTION

The Court has jurisdiction over this action pursuant to the Declaratory Judgment Act, 28 U.S.C. § 2201, and the Patent Statute, 28 U.S.C. §§ 1331 and 1338(a).

II. THE PATENTS AND CLAIMS IN SUIT

In Festo v. Shoketsu, 535 U.S. 722, 730-31, 122 S.Ct. 1831, 152 L.Ed.2d 944 (2002), the Supreme Court stated:

The patent laws "promote the progress of Science and Useful Arts" by rewarding innovation with a temporary monopoly. U.S.C.A. Const., Art. I, § 8, cl. 8. The monopoly is a property right; and like any property right, it's boundary should be clear. This clarity is essential to promote progress, because it enables efficient investment in innovation. A patent holder should know what he owns, and the public should know what he does not.

In 1954 and 1956, Jerome Lemelson filed two lengthy patent applications in the United States Patent Office that purported to describe specific methods and apparatus for performing the inspection and measurement of objects. The 1954 application was abandoned, but a successor to that application issued in 1969 as Lemelson's '481 patent, which expired in 1986. The 1956 application issued in 1963 as Lemelson's '379 patent, and expired in 1980. However, in 1963, before the '379 patent issued, Lemelson filed a "continuation-in-part" (CIP) application which added additional drawings and text to the 1956 application. In 1972, Lemelson filed another CIP application which added more text and which thereafter formed the specification of an additional sixteen patent applications filed by Lemelson between 1977 and 1993. These constitute the "common specification" relevant to this case.

The abstract contained in Lemelson's '029 patent-in-suit filed March 27, 1990,³ provides the following general description of the common specification of the patents-in-suit:

An automatic scanning apparatus and method for detecting the presence of one or more objects in an image field under investigation or inspection. Electra-optical scanning means, such as a television camera, is employed to scan an image field and generate output electrical signals which vary in accordance with variations in the optical characteristics of the matter and objects in the image field scanned. Such signals are computer processed and analyzed to generate coded electrical signals which define optical characteristics of portion of the image field scanned, such as objects or the images of objects scanned, their shape, color of a combination of color and shape. Electronic means is provided to generate further coded electrical signals which indicate the presence of one or more objects in the image field scanned and may be used to effect intelligent indications thereof, to control one or more devices such as a motor or motors, and/or to provide information for computational purposes to be processed and utilized by a computer. In one form, the shape of an object or objects is detected and coded signals generated are employed to effect a comparison of such shape with information relating to the shapes of known objects to identify the objects or objects scanned. In another form, the color or surface characteristics of an object is detected and resulting signals indicative thereof are compared with information derived from a memory to identify either the object or its color or surface characteristics. In a third form both shape and color are detected and compared with recorded information for identification purposes.

Thirteen of the patents-in-suit contained an identical specification to that of the 1972 application-"the common specification." The '190 patent contains additional material not found in the other patents. Not surprisingly, the evidence offered by Symbol and Cognex regarding the disclosure of the common specification and the structure, operation and use of the accused products varies widely from the scope of the disclosure advanced by Lemelson.

First, Symbol and Cognex argue that the seventy-six asserted claims are unenforceable due to prosecution laches. Even if they are not, Symbol and Cognex maintain that the asserted claims are not infringed, that they are invalid due to lack of written description, that they are invalid because they are not enabled, that they are unenforceable due to inequitable conduct on the part of Lemelson, and that the '626 and '918 patent claims are invalid based on anticipatory prior art. Lemelson responds that the evidence calls for rejection of the allegations made by Symbol and Cognex and insists that Lemelson must be deemed the pioneer in the machine vision and bar code fields whose inventions have been infringed by Symbol, Cognex and many others.

III. PROSECUTION LATCHES

Symbol and Cognex contend that to the extent Lemelson made and disclosed any innovations in his 1954 or 1956 patent applications, his delay of from 18 to 39 years in filing the applications that issued as the patents-in-suit requires that Lemelson's right to those claims be deemed forfeited under the equitable doctrine of prosecution laches. Indeed, Symbol and Cognex maintain that during the intervening decades after Lemelson's 1954 and 1956 filings, the technology Lemelson now tries to cover had already been exploited by Symbol and Cognex and other members of the public within the machine vision and bar code industries who had never heard of Lemelson or his patents.

The defense of prosecution laches was first recognized in the patent context nearly 150 years ago in Kendall v. Winsor, 62 U.S. 322, 21 How. 322, 16 L.Ed. 165 (1858). In Kendall, the Supreme Court held that a person "may forfeit his rights as an inventor by a willful or negligent postponement of his claims, or by an...