Symbol Techs., Inc. v. Opticon, Inc.

Opinion

 [***1243]  [*1571]   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  [*1572]  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,  [**2]  and found infringement. ¹ Symbol Technologies, Inc. v. Opticon, Inc., 17 U.S.P.Q.2d 1737, 1990 U.S. Dist. LEXIS 5186 (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. § 1292(c)(2)  [**3]  (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  [**4]  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.

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