887 F.3d 1322
Fed. Cir.2018Background
- John Bean owns U.S. Patent No. 6,397,622 (issued 2002) covering a high-side auger poultry chiller; original patent had two claims.
- In June 2002 Morris sent a demand letter asserting the ’622 patent was invalid based primarily on U.S. Patent No. 5,868,000; John Bean received but did not respond.
- In December 2013 John Bean requested ex parte reexamination; during reexamination John Bean amended original claims and added six new claims; the PTO issued a reexamination certificate on May 9, 2014 allowing the amended/added claims.
- John Bean sued Morris for infringement on June 19, 2014, alleging infringement only from the reexamination certificate date forward and seeking damages only for post-certificate activity.
- Morris asserted equitable estoppel, laches, and intervening-rights defenses; the district court granted summary judgment for Morris, finding John Bean’s 2002 silence and delay barred the suit.
- The Federal Circuit reversed as to equitable estoppel and laches, holding equitable estoppel could not be applied based on pre-reexamination activity when the asserted claims were substantively changed, and SCA Hygiene precluded laches within the six-year damages window.
Issues
| Issue | John Bean's Argument | Morris's Argument | Held |
|---|---|---|---|
| Whether equitable estoppel based on 2002 communications bars enforcement of the reexamined (2014) claims | The 2002 demand letter and John Bean’s silence do not bar enforcement of the reexamined claims because John Bean prosecuted and obtained amended claims in 2014 | Morris argued the 2002 letter and long silence misled it to invest and sell, so equitable estoppel bars the suit | Reversed: equitable estoppel cannot be applied based on 2002 activity to bar reexamined claims that were substantively amended and issued in 2014 |
| Whether laches bars John Bean’s claims for infringement starting May 9, 2014 | Laches applies to bar equitable relief and possibly claims arising from the delay | Laches is available because of 12-year delay in asserting the patent | Reversed as to laches: SCA Hygiene bars laches for damages within six years of suit filing, and here damages began May 9, 2014; parties agreed laches defense is precluded |
| Whether Morris may assert intervening-rights or related equitable defenses on remand | John Bean did not contest that such defenses exist but focused on estoppel/laches ruling | Morris preserved absolute and equitable intervening rights based on amended/new reexamined claims | Unresolved on appeal: court noted intervening-rights defenses may still be available and remanded for district court to consider them |
Key Cases Cited
- Scholle Corp. v. Blackhawk Molding Co., 133 F.3d 1469 (Fed. Cir.) (standard for reviewing summary judgment on equitable estoppel)
- Radio Sys. Corp. v. Lalor, 709 F.3d 1124 (Fed. Cir.) (equitable estoppel cannot apply to claims that have not yet issued)
- A.C. Aukerman Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020 (Fed. Cir.) (elements and effect of equitable estoppel defense)
- Laitram Corp. v. NEC Corp., 163 F.3d 1342 (Fed. Cir.) (damages for reexamined claims require identical scope to original claims)
- Bloom Eng’g Co. v. N. Am. Mfg. Co., 129 F.3d 1247 (Fed. Cir.) (when amended claims are substantively unchanged vs. narrowed)
- Predicate Logic, Inc. v. Distributive Software, Inc., 544 F.3d 1298 (Fed. Cir.) (claim narrowing during reexamination can change infringement/validity analysis)
- Seattle Box Co. v. Indus. Crating & Packing, 731 F.2d 818 (Fed. Cir.) (treatment of claim identity in reexamination/damages context)
- Marine Polymer Techs., Inc. v. HemCon, Inc., 672 F.3d 1350 (Fed. Cir.) (absolute and equitable intervening rights after reexamination)
- Shockley v. Arcan, Inc., 248 F.3d 1349 (Fed. Cir.) (discussion of intervening-rights principles)
- SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC, 137 S. Ct. 954 (U.S.) (laches cannot bar damages within the six-year period prescribed by § 286)