996 F.3d 1332
Fed. Cir.2021Background
- Zinus owns U.S. Patent No. 8,931,123 for an assemblable mattress support; claims require components to fit inside a headboard compartment (claims 1–3).
- Cap Export filed a declaratory-judgment action challenging validity and noninfringement; Zinus counterclaimed for infringement and relied on Colin Lawrie (Zinus president) as a testifying expert.
- In a 2019 ruling the district court granted partial summary judgment that claims 1–3 were not invalid; the parties stipulated to a final judgment awarding Zinus damages and a permanent injunction against Cap Export and Amouyal.
- After entry of judgment, Cap Export discovered pre‑filing sales documents and invoices (2011–2013) for beds from Woody Furniture that allegedly showed beds shipped in one box with components stored in the headboard; some invoices bore Lawrie’s signature.
- Cap Export moved under Fed. R. Civ. P. 60(b)(3) within one year, alleging Lawrie gave false deposition testimony in 2016 denying knowledge of such prior art; the district court found Lawrie’s denials were affirmative misrepresentations, that the Woody beds were highly material prior art, and that the misrepresentations prevented Cap Export from fully presenting its defense, and it vacated the judgment and injunction.
- The Federal Circuit affirmed the district court, holding the court did not abuse its discretion in granting relief under Rule 60(b)(3).
Issues
| Issue | Plaintiff's Argument (Cap Export) | Defendant's Argument (Zinus) | Held |
|---|---|---|---|
| Whether Rule 60(b)(3) relief is available where an opposing party’s corporate officer/testifying expert gave false deposition testimony about material prior art | Lawrie’s 2016 denials were affirmative misrepresentations that hid highly material prior‑art evidence and thus warrant vacatur under Rule 60(b)(3) | Lawrie’s answers were mistaken or ambiguous, not intentional fraud; vacatur unwarranted | Court affirmed: Lawrie’s repeated denials were affirmative misrepresentations and supported relief under Rule 60(b)(3) |
| Whether the Ninth Circuit’s due‑diligence requirement for Rule 60(b)(3) was satisfied | Cap Export had no reason to suspect fraud; its prior art searches did not reveal the Woody documents, so the fraud was not discoverable with due diligence | Zinus argued Cap Export’s counsel should have discovered the emails/documents via standard patent discovery and thus failed the due‑diligence test | Court applied Ninth Circuit standard and found no clear error: Cap Export had no reason to suspect fraud and satisfied due diligence |
| Whether Lawrie’s testimony was intentional/credibly false (credibility) | The district court reasonably found Lawrie’s explanation implausible given his involvement and documentary evidence (invoices, sales) | Zinus argued Lawrie’s testimony was literal error or misunderstanding, not intentional deception | Court deferred to district court credibility findings and upheld the finding of intentional misrepresentation |
| Whether the withheld/hidden evidence was material and prevented Cap Export from fully and fairly presenting its defense | The Woody beds were functionally identical to the claimed invention; evidence would have been material to obviousness/anticipation and to discovery strategy | Zinus contested whether the Woody beds were invalidating prior art but did not show lack of materiality or that Cap Export could fully present its defense despite the misrepresentations | Court held the evidence was highly material and that misrepresentations prevented a full and fair presentation; vacatur was appropriate |
Key Cases Cited
- Casey v. Albertson’s Inc., 362 F.3d 1254 (9th Cir. 2004) (Rule 60(b)(3) and Ninth Circuit due‑diligence discussion)
- De Saracho v. Custom Food Mach., Inc., 206 F.3d 874 (9th Cir. 2000) (clear‑and‑convincing standard for fraud under Rule 60(b)(3))
- Schreiber Foods, Inc. v. Beatrice Cheese, Inc., 402 F.3d 1198 (Fed. Cir. 2005) (procedural issues on Rule 60(b) governed by regional circuit law)
- Helsinn Healthcare S.A. v. Teva Pharms. USA, Inc., 139 S. Ct. 628 (2019) (on‑sale bar defines prior art)
- Jones v. Aero/Chem Corp., 921 F.2d 875 (9th Cir. 1990) (materiality and value of withheld discovery in Rule 60(b)(3) context)
- Mercoid Corp. v. Mid‑Continent Inv. Co., 320 U.S. 661 (1944) (public interest in policing patent monopolies)
- Precision Instrument Mfg. Co. v. Auto. Maint. Mach. Co., 324 U.S. 806 (1945) (inequitable conduct and the necessity of full disclosure)
- Keystone Driller Co. v. Gen. Excavator Co., 290 U.S. 240 (1933) (equity requires placing all material facts before the court)