Fleming v. Escort Inc.
774 F.3d 1371
| Fed. Cir. | 2014Background
- Hoyt Fleming owns two reissue patents (RE39,038 and RE40,653) claiming radar detectors that integrate GPS to reduce false alarms by locking out signals at specified locations.
- Fleming sued Escort and Beltronics for infringement; Escort defended by asserting prior invention by Steven Orr (conception 1988; reduction to practice April 1996).
- Jury found most asserted claims valid and infringed but invalidated five claims of the ’038 patent (claims 1, 18, 45, 47, 48) based on Orr’s prior invention and combinations with Hoffberg, Ross, and Valentine.
- Fleming moved for JMOL arguing (1) insufficiency/specificity of invalidity evidence, (2) lack of corroboration of Orr’s prior invention, and (3) Orr’s alleged abandonment/suppression/concealment under §102(g)(2); Escort cross‑moved arguing the reissue lacked the required “error” under §251.
- The district court denied JMOLs; the Federal Circuit affirmed, upholding the jury’s factual findings (substantial‑evidence review) and resolving legal questions (e.g., reissue error, suppression) de novo where appropriate.
Issues
| Issue | Plaintiff's Argument (Fleming) | Defendant's Argument (Escort) | Held |
|---|---|---|---|
| Sufficiency/specificity of invalidity evidence | Escort’s proof was conclusory and did not identify where prior art met claim limitations | Orr and expert testimony plus documents sufficiently tied Orr/other prior art to claim elements | Affirmed: testimony and expert analysis provided sufficiently specific factual support (substantial evidence) |
| Corroboration of oral testimony of prior invention | Orr’s oral testimony was not adequately corroborated | Documentary evidence (1992 GPS data, 1996 notes, 1996 letter referencing GPS muting) corroborated Orr’s account under rule‑of‑reason | Affirmed: corroboration sufficient as a matter of fact (review for clear error) |
| Abandonment, suppression, or concealment under §102(g)(2) | Orr’s gap in activity (1997–1998) shows abandonment/suppression so prior invention is disqualified | No active suppression; delay explained by bankruptcy, transfer of rights, continued communications and resumed work before Fleming’s filing | Affirmed: no inference of abandonment/suppression given facts; Orr resumed work before Fleming’s priority date |
| Validity of reissue under §251 (requirement of “error”) | Reissue improper because no qualifying “error” in the original patent | Fleming failed to show the original patent contained an error (not just a now‑regretted drafting choice) | Affirmed: Fleming reasonably identified a deficient understanding of scope warranting reissue; §251 “error” requirement satisfied |
Key Cases Cited
- Koito Mfg. Co. v. Turn‑Key‑Tech, LLC, 381 F.3d 1142 (Fed. Cir. 2004) (general/conclusory testimony insufficient to prove invalidity)
- Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368 (Fed. Cir. 1998) (oral inventor testimony requires corroboration)
- Sandt Tech., Ltd. v. Resco Metal & Plastics Corp., 264 F.3d 1344 (Fed. Cir. 2001) (corroboration evaluated under the rule of reason)
- Cooper v. Goldfarb, 154 F.3d 1321 (Fed. Cir. 1998) (corroboration need not be absolutely independent; flexible standard)
- Dow Chem. Co. v. Astro‑Valcour, Inc., 267 F.3d 1334 (Fed. Cir. 2001) (abandonment/suppression may be inferred from unreasonable delay)
- Eolas Techs. Inc. v. Microsoft Corp., 399 F.3d 1325 (Fed. Cir. 2005) (delay excused when inventor continued to refine or improve invention)
- In re Dinsmore, 757 F.3d 1343 (Fed. Cir. 2014) (§251 error includes deficient understandings of fact or law; not every drafting choice qualifies)
- In re Clement, 131 F.3d 1464 (Fed. Cir. 1997) (determination whether §251 requirements met is a question of law reviewed de novo)