Lemelson “Bar Code” And “Machine Vision” Patents Invalid, Unenforceable, and Not Infringed

Symbol Technologies, Inc. v. Lemelson Med., Educ. & Res. Found. Ltd. Partnership, __ F. Supp.2d ___ (Jan. 23, 2004) (D. Nev.: Judge Pro)
District Court finds all asserted Lemelson claims unenforceable for prosecution laches, invalid for lack of written description and enablement, and not infringed. Seventy-six claims from 14 patents were asserted. These were the so-called “machine vision” and “bar code” patents. These were the ones he was asserting against the entire world.
Prosecution Laches: The Court first rejected Lemelson’s argument that Eldred v. Ashcroft had held that delay in asserting rights does not contravene the Constitution. The Court then found that Lemelson’s 18 to 39-year delay was unreasonable and unjustified. The Court also noted that, after Lemelson’s first patent issued in 1963, the public was allowed to assume that unclaimed matter was dedicated to the public per Maxwell v. J. Baker. Also, all the claims that were pending in 1972 had issued by 1987, so that should have been the end of things. Also: (1) the original patents became public in the 60s and expired in the 80s, (2) the technology was widely described in the literature before Lemelson added the claims, (3) Lemelson knew about the industry and still waited, (4) “Mr. Lemelson systematically extended the pendency of his applications by sitting on his rights, and sequentially filing one application at a time so that he could maintain copendency while waiting for viable commercial systems to be designed and marketed, and (5) he then drafted hundreds of claims in the 80s and 90s specifically directed at the new systems. Symbol did not have to show that Lemelson “intentionally stalled” any applications. At a minimum, this was “culpable neglect.” The prejudice occurred to the public and to Symbol. Statistically, out of 5 million applications from 1914 to 2001, Lemelson holds the top 13 spots for length of pendency. A quote: “If the defense of prosecution laches does not apply under the totality of circumstances presented here, the Court can envision very few circumstances under which it would.” The Court also rejected legal expert John Witherspoon’s testimony that Lemelson followed “accepted and reasonable practices.” There was also strong evidence of intervening private and public rights.
Priority: Lemelson did not establish that his applications properly claimed priority to his earlier 1954 application, but it is not clear what date he actually received from the Court.
Claim Construction: The Court rejected Lemelson’s assertion that the POSITA would have three separate skill sets: (1) scanning, (2) computers and data analysis, and (3) manufacturing or production engineering. Rather, the POSITA was an EE with 2 years in signal processing and TV electronics. The Court accepted the testimony of Symbol’s expert Dr. Horn that the patents required “prepositioning” with scanning, and rejected the testimony of Lemelson’s expert, Dr. Hunt, that a POSITA could construct a non-prepositioning embodiment. The claims were also limited to scanning with a TV or video camera, and not with a laser or CCD scanner. Also, the term “computer” referred to a specific circuit rather than a general-purpose, programmable computer.
Infringement: Multiple limitations were missing: (1) the accused products do not have to be pre-positioned, (2) they do not use a video scanning device to scan and generate video signals, (3) signals generated by the accused products are not representative of the thing being scanned, (4) they don’t use clipping or threshholding to ascertain inflections, and (5) they operate on the entire analog signal, not merely a gated predetermined portion of the signal. In addition, the machine vision systems do not compare analog or digital signals, and do not have fixed clippers to look for inflections. The Court even suggested that there would be no infringement under Lemelson’s constructions.
Written Description: The Court skips this since it picked Symbol’s claim constructions.
Enablement: Lemelson’s own experts admitted the patents were not enabled if the Court accepted Symbol’s definition of a POSITA.
Anticipation: The Court summarily concluded that Symbol failed to prove anticipation.
Inequitable Conduct: The Court also summarily concluded that Symbol failed to prove inequitable conduct.
Lemelson’s Fee Motion: The Court agreed that the length of Lemelson’s prosecution and the length of the briefing in this case were both “exceptional,” but Lemelson was not the prevailing party and thus could not get fees.