988 F.3d 1334
Fed. Cir.2021Background
- John Bean owns U.S. Patent No. 6,397,622 ("'622 patent") covering an auger-type poultry chiller; Morris & Associates is John Bean's only domestic competitor in that market.
- Morris sent a demand letter in June 2002 asserting the patent was invalid; John Bean did not respond and Morris developed and sold chillers described by the patent.
- John Bean requested ex parte reexamination of the '622 patent on December 18, 2013; the USPTO issued a reexamination certificate on May 9, 2014 amending/adding claims.
- John Bean sued Morris for infringement of the reexamined claims on June 19, 2014; the case proceeded through summary-judgment motions and an earlier Federal Circuit decision (John Bean I) that led to remand.
- On remand the district court granted Morris summary judgment on the affirmative defense of equitable intervening rights (finding substantial pre-reissue preparation, business restructuring toward the accused product, long delay by John Bean, and John Bean's bad faith), and denied summary judgment on prosecution laches; the Federal Circuit affirmed the grant as to equitable intervening rights.
Issues
| Issue | Plaintiff's Argument (John Bean) | Defendant's Argument (Morris) | Held |
|---|---|---|---|
| Equitable intervening rights under 35 U.S.C. § 252 | District court abused discretion; recoupment and profits should have been weighed more heavily and factual disputes (e.g., willfulness) preclude summary judgment | Morris made substantial preparations and investments pre-reexamination, restructured business to accused product, and John Bean delayed enforcement for ~11 years | Affirmed — district court did not abuse discretion in granting equitable intervening rights after balancing multiple equitable factors beyond mere recoupment |
| Prosecution laches as a defense to enforcement of reexamined claims | Laches should not bar enforcement (or, alternately, factual disputes preclude summary judgment) | Morris urged prosecution laches as a bar given delay and conduct | Not decided on appeal — Federal Circuit affirmed on intervening-rights ground and did not reach laches |
| Willful infringement | Genuine issues of willfulness remain and should preclude summary judgment | If equitable intervening rights eliminate infringement liability, willfulness is moot | Held moot — once intervening rights granted, infringement (and thus willfulness) is no longer actionable |
Key Cases Cited
- Marine Polymer Techs., Inc. v. HemCon, Inc., 672 F.3d 1350 (Fed. Cir. 2012) (reexamination permits absolute and equitable intervening rights for amended/new claims)
- BIC Leisure Prods., Inc. v. Windsurfing Inter., Inc., 1 F.3d 1214 (Fed. Cir. 1993) (equitable intervening rights doctrine and discretionary relief under § 252)
- Seattle Box Co. v. Indus. Crating & Packing, Inc., 756 F.2d 1574 (Fed. Cir. 1985) (rationale for intervening rights; courts apply equity to allow continued use when appropriate)
- Plastic Container Corp. v. Continental Plastics of Oklahoma, Inc., 607 F.2d 885 (10th Cir. 1979) (equity may allow recoupment and conversion cost offsets even where intervening rights are denied)
- Shockley v. Arcan, Inc., 248 F.3d 1349 (Fed. Cir. 2001) (appellate review standard for equitable intervening-rights determinations)
- Mikohn Gaming Corp. v. Acres Gaming, Inc., 165 F.3d 891 (Fed. Cir. 1998) (equitable remedies require flexible, case-specific balancing)
- Monsanto Co. v. E.I. Du Pont de Nemours & Co., 784 F.3d 1189 (Fed. Cir. 2014) (scope of judicial equity in tailoring remedies)
- Sontag Chain Stores Co. v. National Nut Co., 310 U.S. 281 (U.S. 1940) (public has right to use what is not specifically claimed in the original patent)