## United States Court of Appeals for the Federal Circuit

04-1451

SYMBOL TECHNOLOGIES, INC., ACCU-SORT SYSTEMS, INC., INTERMEC TECHNOLOGIES CORP., ME TROLOGIC INSTRUMENTS, INC., PSC INC., TEKLOGIX CORPORATION, ZEBRA TECHNOLOGIES CORP., COGNEX CORPORATION, and TELXON CORPORATION, Plaintiffs-Appellees,

v.

LEMELSON MEDICAL, EDUCATION & RESEARCH FOUNDATION, LP, Defendant-Appellant.

Jesse J. Jenner , Ropes & Gray LLP, of New York, New York, argued for plaintiffs-appellees. With him on the brief were Charles Quinn , Krista M. Rycroft , Kenneth B. Herman , William J. McCabe , and Pablo D. Hendler

. Richard G. Taranto , Farr & Taranto, of Washi ngton, DC, argued for defendantappellant. With him on the brie f was Victoria Gruver Curtin , of Scottsdale, Arizona. Of counsel on the brief Gerald D. Hosier , of Las Vegas, Nevada, and Louis J. Hoffman , of Scottsdale, Arizona. George M. Sirilla , Pillsbury Winthrop LLP, of McLean, Virginia, for amicus curiae National Retail Federation. With hi m on the brief was Raymond L. Sweigart

. Harold C. Wegner , Foley & Lardner LLP, of Washington, DC, for amicus curiae Takeda Pharmaceutical Co. Ltd. With him on the brief were Stephen B. Maebius , George C. Best , Rouget F. Henschel , and Sean A. Passino

. Frank E. Scherkenbach , Fish & Richardson P.C., of Boston, Massachusetts, for amici curiae Cypress Semiconductor Corp ., LSI Logic Corp., Micr el, Inc., and Linear Technology Corp. With him on the brief were Katherine Kelly Lutton , John A. Dragseth , and Christian A. Chu

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Jonathan M. James , Perkins Coie Brown & Bain P. A., of Phoenix, Arizona, for amicus curiae Intel Corporat ion. With him on the br ief were C. Randall Bain and Dan L. Bagatell

. Appealed from: United States Distric t Court for the District of Nevada Chief Judge Philip M. Pro

## United States Court of Appeals for the Federal Circuit

04-1451

SYMBOL TECHNOLOGIES, INC., ACCU-SORT SYSTEMS, INC., INTERMEC TECHNOLOGIES CORP., ME TROLOGIC INSTRUMENTS, INC., PSC INC., TEKLOGIX CORPORATION, ZEBRA TECHNOLOGIES CORP., COGNEX CORPORATION, and TELXON CORPORATION, Plaintiffs-Appellees,

v. LEMELSON MEDICAL, EDUCAT ION & RESEARCH FOUNDATION, LP, Defendant-Appellant.

_________________________ DECIDED: September 9, 2005

_________________________ Before MAYER, LOURIE, and BRYSON, Circuit Judges

. LOURIE, Circuit Judge

. Lemelson Medical, Education & Resear ch Foundation, LP (“Lemelson”) appeals from the declaratory judgment of the United States Distric t Court for the District of Nevada in favor of Symbol Technologies, et al. (collectively, “Symbol”) that Lemelson’s asserted patent claims are invalid for lack of enablement, unenforceable under the doctrine of prosecution lac hes, and not infringed. Symbol Techs., Inc. v. Lemelson Med., Educ. & Research Found. , 301 F. Supp. 2d 1147 (D. Nev. 2004) (“Symbol III ”). Because we conclude that the district cour t did not abuse its discr etion in holding thatLemelson’s patents are unenforc eable under the doctrine of prosecution laches, we affirm. BACKGROUND Lemelson is the assignee of approxim ately 185 unexpired patents and many pending patent applications of the late Jerome H. Lemelson. The pat ents at issue here generally involve machine vision and automatic identification bar code technology and are asserted to be entitled to the benefit of t he filing date of two Lemelson patent applications filed in 1954 and 1956. In December 1954, Mr. Lemelson filed a patent app lication that disclosed methods and an apparatus for performing the in spection and measurement of objects. The specification stated: “This invention relates to automatic production equipment and related devices and particularly devices which will perform an automatic operation or operations on work in progre ss.” In 1956, he filed a second application, this time disclosing methods and an apparatus relating to “magnetic recording and particularly to recording means and arrangements wher eby video image signals may be used for effecting a multiple of computing, operat ive, measurement and control functions.” Ultimately, in 1963, U.S. Pat ent 3,081,379 issued from the 195 6 application. Before the ’379 patent issued, Mr. Lemel son filed a 1963 continuation-in-part (“CIP”) application from the 1954 and 1956 applications, adding dra wings and text and allegedly combining aspects of the two specifications. In 1972, he further augmented that specification by filing another CIP application, a so-called “common specification,” that eventually became the basis for an additional sixteen patent applications filed between 1977 and 1993. Symbol III , 301 F. Supp. 2d at 1153. Fourteen of the resu lting patents are before

04-1451 2us. Claim 12 of U.S. Patent 4,979,029, which resulted from one of those applications, is representative and reads as follows: A method for inspecting an image fi eld to determine if a select image phenomenon is present in said image field, comprising: (a) scanning an image field containing at least one contrasting image portion whic h is detectable with an electronic scanning device, (b) generating first electric al signals which vary in accordance with variations in detected contrasting image portions of the image field scanned, (c) analyzing said first electrical signals and generating first information signals corresponding to the detected contrasting image por tions of the image field scanned, (d) electrically comparing said first information signals from recordings in a memory which are indicative of said select image phenomenon, and (e) generating electrical si gnals indicative of the presence of said select im age phenomenon in said scanned image field. ’029 patent, col. 68, ll. 6-24. Symbol and its co-plaintiffs design, manufacture, and sell bar code scanners and related machine vision products, including la ser and CCD bar code readers. Symbol III , 301 F. Supp. 2d at 1150. In 1998, Symbol’s customers began receiving letters from Lemelson stating that the use of the plaintiff’s pr oducts infringed various Lemelson patents. Symbol claims that it would be forced to indemnify those customers should any of the patents be found to be valid and in fringed. In response, Symbol filed a declaratory judgment action against Lemels on seeking a judgment that the asserted patents * are not infringed by Symbol or its cust omers. It also s ought a judgment that

* The patents at issue in this case are U.S. Patent s 4,338,626; 4,511,918; 4,969,038; 4,979,029; 4,984, 073; 5,023,714; 5,067,012; 5,119,190; 5,119,205; 5,128,753; 5,144,421; 5,249,045; 5,283,641; and 5,351,078.

04-1451 3the patents are invalid under 35 U.S.C. § 101 for lack of utilit y; § 102 for anticipation; § 103 for obviousness; § 112 for failure to comply with the written description, enablement, and definiteness requirem ents; and for double patenting. Symbol also asserted that the patents we re unenforceable for prosecution laches and inequitable conduct before the U.S. Patent and Trademark Office (“PTO”). Id. at 1151. Previously, Lemelson had moved to dism iss the case, arguing that there was no case or controversy between the parties and that Symbol’s cause of action for prosecution laches failed to state a clai m upon which relief could be granted. The district court concluded that there was a suffici ent case or controver sy, but it dismissed Symbol’s prosecution laches claim. Symbol Techs., Inc. v. Lemelson Med., Educ. & Research Found. , No. 99-CV-0397 (D. Nev. Mar. 21, 2000) (“Symbol I ”). Symbol filed an interlocutory appeal to this court under 28 U.S.C. § 1292(b), and we agreed to consider “whether, as a matter of law, the equitable doctrine of laches may be applied to bar enforcement of patent claims that issued after an unreasonable and unexpected delay in pros ecution even though the applicant complied with pertinent statutes and rules.” Symbol Techs., Inc. v. Lemelson Med., Educ. & Research Found. , 277 F.3d 1361, 1363 (Fed. Cir. 2002) (“Symbol II ”). We reversed the district court’s judgment, rejecting Lemelson’s arguments that prosecution la ches was limited to claims arising out of interference proceedings and t hat the passage of the 1952 Patent Act with its provisions for filing continuation and cont inuation-in-part applicat ions foreclosed the application of laches. Id. at 1365-66. We held instead that Symbol’s defense of prosecution laches was legally viable, and we remanded the case to the district court for further proceedings to determine the relevant facts.

04-1451 4Upon remand, the court c onducted a bench trial from November 2002 to January 2003, followed by post-trial briefing that concl uded in June 2003. In a decision issued in January 2004, the court held that Lemelson’ s patents were indeed unenforceable due to prosecution laches, invalid for lack of enablement, and not infringed by Symbol’s products. First, although acknowledging t hat Symbol had not demonstrated that Lemelson intentionally stalled in secu ring the patents, the court stated that “unreasonable delay alone is sufficient to apply prosecution laches without the requirement that Lemelson in tended to gain some advantage by the delay.” Symbol III , 30 F. Supp. 2d at 1156 (citing In re Bogese II , 303 F.3d 1362, 1369 (Fed. Cir. 2002)). The court also applied the doctrine of prosecution laches because Symbol had presented “strong evidence . . . of inte rvening private and public rights.” Id. at 1157. Accordingly, it held that “ Lemelson’s 18 to 39 year delay in filing and prosecuting the asserted claims under the f ourteen patents-in-suit . . . was unreasonable and unjustified and that the doctrine of pros ecution laches renders the a sserted claims unenforceable.” Id. at 1155. Next, the court determined whether the various claims in suit were entitled to the filing date that Lemelson claimed. Specifically, Lemelson asse rted that sixty-eight of the asserted patent claims that shared the “common specification” were entitled to priority from the 1963 application which in turn claimed priority from the 1954 and 1956 applications. Thus, Lemelson argued that so me claims were entitled to a 1954 filing date and others to a 1956 filing date. Howeve r, the court rejected those arguments, finding that Lemelson had not s hown that the 1963 application wa s related to the earlier filings in a manner sufficient to justify its st atus as a CIP applicati on. It determined that

04-1451 5Lemelson “failed to prove that the 1963 Application is a c ontinuation-in-part of the 1954 Application as required under § 120, nor has Lemelson demonstrated the relationship of the 1954 Application to the 1963 Application as required by Patent Office Rule 78(a).” Id. at 1161. The court thus held that Lemel son could not rely on the 1954 or 1956 applications as intrinsic evidence for purposes of claim construction and that the claims were not entitled to the benefit of the 1954 and 1956 filing dates. Id. A consequence of that holding related to the term “pre-positioning,” the significance of which was contes ted by the parties. As the district court observed, the term “pre-positioning” appears throughout t he 1963 specification, which does not disclose any embodiment without pre-positioning. The court held that all the claims must be interpreted to require pre-posit ioning of the object to be scanned. Id. at 1163. Because the court held that Lemelson coul d not rely upon the 1954 application, which presents embodiments without such pre-positioning, it held that it could not argue that pre-positioning was not a claim limitation of the claims in suit. The court stated that “[t]his requirement of pre-positioning alone places the products manufactured and sold by Symbol . . . outside the scope of Lemelson’s invention.” Id. at 1163. Additionally, the court construed the claim term “scanning” to mean that Lemelson’s invention involved “scanning by the use of a television or video camera and not scanning by means of a laser or CCD camera employed by Symbol.” Id. at 1164. It reasoned that one of ordinary sk ill in the art could not have described such devices at the time the applications we re filed because the evidence presented at trial clearly established that laser and CCD cameras did not exist in 1956 or 1963. Id. Pursuant to similar reasoning, the court rejected Lemelson’s constructi on of “computer analyzing” or

04-1451 6“computer processing” as referring to a general purpose, programmable computer, and it instead adopted Symbol’s defin ition of “a computing circ uit capable of performing a simple mathematical task su ch as subtraction.” Id. Because Symbol’s devices used modern tools such as laser and CCD came ras and programmable computers, and because the district court refused to cons true Lemelson’s claim terms as encompassing such devices, the court held that Lemelson failed to prove that Symbol’s products infringed the asserted patent claims. Id. at 1164-65. The district court also c onsidered the definition of a per son of ordinary skill in the art and whether Lemelson’s specification w ould enable such a person to make and use the claimed inventions. Symbol presented expert witness testimony asserting that, for purposes of the asserted patents, a person of ordinary skill in the various fields of the invention is an electrical engineer with approximately two y ears of experience in signal processing and television electronics. The court was persuaded by Symbol’s arguments and adopted that def inition of the person of ordi nary skill in the art, rejecting Lemelson’s argument that the hypothetical person should in stead be a “team” of experts skilled in scanning and data acquisition, data analysis and computing, and manufacturing or production engi neering. The court also noted that Lemelson’s own experts acknowledged that a person fitting t he court’s description would not have been enabled to practice the inventions of the clai ms, and the court accordingly held that the claims were invalid for lack of enablement under § 112. Finally, with respect to other issues raised in the case, the court rejected Symbol’s defenses of antici pation and inequitable conduct as not sufficiently supported by the evidence. It determi ned that it was unnecessary to consider whether the

04-1451 7specifications met the § 112 written descr iption requirement because it had rejected Lemelson’s claim construction on which that defense rested. Additionally, the court rejected Lemelson’s claim for attorney f ees to compensate for Symbol’s alleged unreasonable litigation tactics. Id. at 1165-67. Consequently, the district court held that Lemelson’s patents were invalid for lack of enablement, unenforceable due to prosecution laches, and not infringed. Lemelson appeals, and we have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1). DISCUSSION Lemelson argues that the di strict court erred by holding that the 1963 application was not entitled to the benefit of the priority date of the 1954 and 1956 applications. It asserts that the 1963 CIP application met the statutory requirements set forth in 35 U.S.C. § 120 for a claim of pr iority: it contained a reference to the prior application, identified it by serial number and filing dat e, and indicated the relationship between the applications. Lemelson thus c ontends that the 1963 application explicitly stated that it was a CIP and properly referenced the earlier applic ations in order to claim priority. It also asserts that it was reversible error fo r the court to resolve the issue of priority without engaging in a proper claim-by-claim analysis. Symbol responds that the 1963 applic ation’s mere reference to the 1954 application was not sufficient for entitlement of priority. It argues that more than mechanical compliance with the st atute is required for entitlem ent to priority and that § 120 requires that a “substantia l portion” of the earlier applic ation must be repeated in the later application. Symbol states that while the 1954 application contains 170 pages of text and 104 figures, the 1963 application cont ains 118 pages of different text and 28

04-1451 8different figures, and it does not repeat any of t he text or figures of the 1954 application. Symbol also asserts that Lemelson cannot incorporate “essential material” from an abandoned reference. Lemelson also argues that the district court erred in its enablement decision because it improperly defined a person of ordinary skill in the various arts of the disclosed inventions. Lemelson maintains that the specifications involved three distinct fields, and that the skilled arti san of the claimed inventions must combine knowledge of multiple fields, in effect, be a team of ex perts and not a single electrical engineer. For those reasons, Lemelson argues that the distri ct court’s determinatio n that the claims were not enabled was legal error. Symbol responds that the district court explicitly found the te stimony of Symbol’s expert witness, Dr. Horn, more credible than that of Dr. Williamson, Lemelson’s expert, regarding the definition of t he skilled artisan. Additionally, it cites Lemelson’s own statements in the specificati ons and the prosecution histor y that support the conclusion that one skilled in the art is properly defined as an electrical engineer, refuting Lemelson’s present position that such a per son should be construed to be a team of experts. Symbol contends that, under Lemels on’s theory, every minor reference to a particular field in a specification coul d expand the standard for judging a patent's compliance with the statute, gr eatly complicating the administ ration of the patent laws. Symbol argues that the court’s characterizati on of the person of or dinary skill in the art was not in error and should be affirmed. Lemelson additionally argues that the di strict court abused its discretion in holding the asserted patents unenf orceable for prosecution laches. Lemelson argues

04-1451 9that the district court solely relied on the del ay in the issuance of the asserted patents. It claims that it provided justification for t he time that elapsed between the filing of each of its patents and their eventual issuance, citing such ev ents as restriction requirements by PTO examiners and time pending review by the PTO. Furthermore, Lemelson argues that the court agreed t hat Symbol had not proven t hat Lemelson intentionally delayed issuance, a fact that should have been dispositive of Symbol’s equitable defense. Symbol responds that the c ourt considered many factors in addition to the “sheer elapsed time” of Lemelson’s pr osecution, including the pros ecution histories of the asserted claims, Lemelson’s conduct before the PTO during decades of prosecution, the independent progress of other innovators in the field of machine vision and bar code technology, and the prejudice to the public resulting from Lemelson’s delay. Those reasons, Symbol argues, were well support ed by evidence and properly considered by the court. It also contends that the laches standard does not require “intentional” delay, but only that which is “unreasonable and unexplained.” Lemelson finally argues that the district court erred in its claim constructions and in excluding depositions of the deceased inv entor and other evidenc e. It additionally challenges the court’s holding of a lack of infringement. We agree with Symbol that the court did not abuse its discretion in holding that Lemelson’s patents are unenforc eable under the doctrine of prosecution laches. The doctrine of prosecution laches is an equitable defense, Symbol II , 277 F.3d at 1366 (quoting P.J. Federico, Co mmentary on the New Patent Act, 75 J. Pat. & Trademark Off. Soc’y 161, 215 (1993)), and we review the judgm ent of the district court on that

04-1451 10issue for an abuse of discretion, Bridges tone/Firestone Research v. Auto. Club , 245 F.3d 1359, 1361 (Fed. Cir. 2001). This court has earlier held in this case that prosecution laches may render a patent unenforceable when it has issued only after an unreasonable and unexplained delay in prosecution. Symbol II , 277 F.3d at 1363, 1368. We did not set forth any firm guidelines for determining when such laches exists, but left this determination to the district c ourt on remand, as the def ense exists as an equitable doctrine. In so doing, however , we discussed precedent such as Woodbridge v. United States , 263 U.S. 50 (1923), and Webster Electr ic Co. v. Splitdorf Electrical Co. , 264 U.S. 463 (1924), wherein the Supr eme Court applied the doctrine of prosecution laches to render patents unenfor ceable. Although those cases involved a nine-and-a-half-year delay and an eight-year delay, respectively, the Court later held that the presumptive two-year ti me limit referred to in Webster was dictum because it was not directly applicable to the issue of la ches on which the case was decided. Thus, there are no strict time limit ations for determining whether continued refiling of patent applications is a legitimate utilization of statutory prov isions or an abuse of those provisions. The matter is to be decided as a matter of equity, subject to the discretion of a district court before which the issue is raised. There are legitimate grounds for refili ng a patent application which should not normally be grounds for a holding of laches , and the doctrine should be used sparingly lest statutory provisions be unjustifiably viti ated. The doctrine should be applied only in egregious cases of misuse of the statutory patent system. Filing a divisional application in response to a requirement for restriction is one such legitimate reason for refiling a patent app lication. Given one’s entitlement to claim

04-1451 11an invention in various ways, and the PTO’s pr actice of limiting it s examination of an application to only one of what it considers to be several inventions, it cannot, without more, be an abuse of the system to file divi sional applications on various aspects that the PTO has considered to be separate and distinct from each other. See 35 U.S.C. § 121 (2000); 37 C.F.R. § 1.142 (2005); see also Manual of Patent Examining Procedure §§ 803, 818 (8th ed., rev. 2 2004). That is so even when one defers the filing of a divisional applicati on until just before the issuance of the parent application. Such action is expressly allowed by statut e. 35 U.S.C. § 121. Moreover, one might legitimately refile an application containing re jected claims in order to present evidence of unexpected advantages of an invention when that evidence may not have existed at the time of an original rejection. Comm only, and justifiably, one might refile an application to add subject matter in order to attempt to support broader claims as the development of an invention progresses, alt hough entitlement to an earlier filing date for any claimed subject matter may of course be necessary to avoid a statutory bar created by intervening events outlined in 35 U.S.C. §§ 102 and 103. One may also refile an application even in the absence of any of thes e reasons, provided that such refiling is not unduly successive or repetitive. However, refiling an application solely containing previously-allowed claims for the business purpose of delaying their i ssuance can be considered an abuse of the patent system. See Bogese , 303 F.3d at 1368-69 (di scussing Ex parte Hull , 191 USPQ 157 (Bd. Pat. App. & Interfs. 1975)). In par ticular, multiple ex amples of repetitive refilings that demonstrate a pattern of unjustifiably delayed prosecution may be held to constitute laches. Taken singly, the delay in the prosecution on any one particular

04-1451 12application will surely not appear to merit relief by the courts in equity. On the other hand, an examination of the to tality of the circumstances, including the prosecution history of all of a series of related patents and overall delay in issuing claims, may trigger laches. The district court here heard considerabl e evidence that that was what occurred in this case. The court f ound that an 18- to 39-year time period had elapsed between the filing and issuance of the patents in suit. Symbol III , 301 F. Supp. 2d at 1355. That period of time is not what is contemplated by the patent st atute when it provides for continuation and continuation-in -part applications. Patent applications should normally be permitted to issue when they have been allowed and the statutory requirements complied with. The court also found t hat Lemelson had engaged in “culpable neglect” during the prosecution of t hese applications and it recogni zed the adverse effect on businesses that were unable to determine what was patented from what was not patented. Id. at 1356. It noted that the Lemels on patents occupied the “top thirteen positions” for the longest prosecutions from 1914 to 2001. Id. The court also cited the existence of “intervening pr ivate and public rights.” Id. at 1357. It concluded that “[i]f the defense of prosec ution laches does not apply under the totality of circumstances here, the Court can envision very few ci rcumstances under which it would.” Id. at 1356. Under those circumstances, we can hardly conclude that t he court abused its discretion in holding the involved patents unenforceabl e on this ground. The court thoroughly examined the facts and the equities, and it ex ercised its discretion reasonably. We therefore affirm the district c ourt’s holding of unenforceability.

04-1451 13In view of the fact t hat we are affirming the district court’s judgment of unenforceability for reasons of prosecuti on laches, we need not review Lemelson’s claims that the district cour t erred in its conclusions c oncerning entitlement to earlier priority dates, enablement, claim construction, infringement, or other issues that have been raised in this appeal, some of which otherwise might have required remand. Those issues are therefore moot. CONCLUSION Because the court did not abuse its discretion in holding that Lemelson’s asserted patents are unenforceable under the doctr ine of prosecution laches, we affirm the judgment of the district court.
AFFIRMED

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