February 25, 2020

February 25, 2020

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February 24, 2020

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Post-Grant Review Chickens Come Home to Roost: The Federal Circuit Clarifies the Effect of Reexamination on Equitable Estoppel and Laches

The Federal Circuit recently overturned a decision estopping the plaintiff from pursuing its infringement claims in the United States District Court for the Eastern District of Arkansas, and clarified the effect of reexamination on equitable estoppel and laches. In John Bean Technologies Corporation v. Morris & Associates, Inc., the Federal Circuit held that District Court abused its discretion applying equitable estoppel to bar John Bean Technologies Corp.’s (“John Bean”) infringement action without considering the impact of an intervening ex parte reexamination on the claims of the asserted patent.

By way of background, John Bean and the defendant, Morris & Associates, Inc. (“Morris”), are fierce competitors in the poultry chiller market, in which they are the only U.S. participants.  In 2002, John Bean began notifying Morris’ customers that Morris equipment infringed John Bean’s U.S. Patent No. 6,397,622 (“’622 Patent”).  Morris alleged by letter response that the ’622 Patent is invalid, and provided factual support and evidence for this contention. Morris also accused John Bean of making misleading statements to its customers, in violation of unfair competition laws.

John Bean did not respond.  Eleven years later, John Bean filed a request for ex parte reexamination of the ’622 Patent.  The United States Patent and Trademark Office rejected both claims of the ’622 Patent as invalid.  In response, John Bean amended the original two claims of the patent and added six new claims.  A month after the reexamination certificate issued, and 12 years after Morris’ letter, John Bean filed a complaint against Morris for patent infringement.

The complaint did not allege that Morris engaged in any infringing activity prior to the issuance of the reexamination certificate and did not seek damages for any activity prior to the issuance of the reexamination certificate.  However, the District Court granted Morris’ motion for summary judgment in favor of Morris holding that John Bean’s infringement action was barred by both laches and equitable estoppel stemming from activities that occurred since 2002.

The Federal Circuit disagreed with the District Court, noting that the 2014 reexamination resulted in substantive amendments, which narrowed the scope of the original claims and added six new claims.  The amendments made during reexamination were both substantial and substantive—John Bean had added new limitations and incorporated another patent application by reference.  As such, the Federal Circuit concluded that equitable estoppel could not apply based on Morris’ 2002 letter challenging the validity of the original claims.  Because the patents had substantively changed, the court reversed and remanded the lower court’s grant of summary judgment based on equitable estoppel and laches.  While this result follows common sense, it provides some welcome clarity regarding the assertion of equitable estoppel and laches defenses following the reexamination.

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About this Author

 Andrew H. DeVoogd Member Boston Mintz Patent Litigation Licensing & Technology Transactions International Trade Commission Strategic IP Monetization & Licensing Federal District Court IP Due Diligence

Drew is an experienced patent litigator and trial attorney whose work encompasses a broad range of technologies. He regularly represents clients in high stakes International Trade Commission investigations involving some of the world's largest technology companies. He also litigates patent matters and other business disputes in federal district courts around the country, and advises clients in complex IP licensing and related transactions. Drew excels at helping clients make sense of nuanced legal issues while developing effective strategies to protect and leverage their intellectual...

Christopher G. Duerden Associate Mintz Patent Litigation, Federal District Court, International Trade Commission, Technology

Chris is a patent attorney whose practice focuses on IP litigation. He has worked on a variety of International Trade Commission cases involving mechanical, electrical, software, and computer engineering technology.

Prior to joining Mintz, Chris was a project attorney in the Boston office of a national, multi-practice law firm. Working with the patent prosecution team, he drafted responses to USPTO Office Actions involving telecommunications.

Earlier Chris founded and ran a company that developed and sold kits for a Linux-powered gaming system. He later sold the company to an established gaming hardware company, which still produces his kits. He also worked for United Electric Controls — first as a manufacturing engineer and later as the prototype and development department manager — and as an engineer at Goodyear Dunlop Tires.