Symbol Technologies, Inc. v. Lemelson Medical, Education & Research Foundation, Ltd. Partnership

301 F. Supp. 2d 1147, 69 U.S.P.Q. 2d (BNA) 1738, 2004 U.S. Dist. LEXIS 1499
CourtDistrict Court, D. Nevada
DecidedJanuary 23, 2004
DocketCV-S-01-701-PMP(RJJ) to CV-S-01-703-PMP(RJJ)
StatusPublished
Cited by8 cases

This text of 301 F. Supp. 2d 1147 (Symbol Technologies, Inc. v. Lemelson Medical, Education & Research Foundation, Ltd. Partnership) is published on Counsel Stack Legal Research, covering District Court, D. Nevada primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Symbol Technologies, Inc. v. Lemelson Medical, Education & Research Foundation, Ltd. Partnership, 301 F. Supp. 2d 1147, 69 U.S.P.Q. 2d (BNA) 1738, 2004 U.S. Dist. LEXIS 1499 (D. Nev. 2004).

Opinion

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., Inter-mec 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-suit 1 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 Le-melson patents. Symbol and Cognex claim that they will be forced to indemnify their customers should any of the Lemel-son patents be found to be infringed. As a result, Symbol and Cognex filed this action seeking a declaration that uses of their bar *1151 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 Facts 2 set forth in the *1152 Joint Pretrial Order (# 355), and the arguments presented in the post-trial briefs, *1153 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 Lemel-son’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 Lemel-son’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. Elee-tra-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.

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301 F. Supp. 2d 1147, 69 U.S.P.Q. 2d (BNA) 1738, 2004 U.S. Dist. LEXIS 1499, Counsel Stack Legal Research, https://law.counselstack.com/opinion/symbol-technologies-inc-v-lemelson-medical-education-research-nvd-2004.