April 18, 2021

Volume XI, Number 108

Advertisement

April 16, 2021

Subscribe to Latest Legal News and Analysis

Recoup Your Investment and More – Your Equitable Intervening Rights Are Safe

In John Bean Tech. Corp. v. Morris & Associates, Inc., Nos. 2020-1090, 2020-1148 (Fed. Cir. Feb. 19, 2021), the Federal Circuit affirmed the district court’s decision granting-in-part Morris’s motion for summary judgment as to equitable intervening rights.

In 2003, Morris sent John Bean a letter explaining its belief that U.S. Patent No. 6,397,622 was invalid and provided prior art.  After receiving no response from John Bean, Morris began practicing the claimed invention.  John Bean took no action until eleven years later when it sought ex parte reexamination of the ’622 patent.  Through ex parte reexamination, John Bean amended two claims and added six additional claims.  After the reexamination certificate issued in 2014, John Bean sued Morris for infringement.  Morris filed a motion for summary judgment arguing that John Bean’s claim was barred due to equitable intervening rights.  After analyzing six equitable intervening rights factors, the district court concluded that Morris was entitled to equitable intervening rights.

On appeal, John Bean argued that the district court did not give sufficient weight to the fact that Morris had already recouped its investment.  The Federal Circuit rejected John Morris’s argument, explaining that monetary investments are not the only relevant investments and that recoupment of monetary investments does not preclude the grant of equitable intervening rights.  The Court concluded that the district court did not abuse its discretion in granting-in-part Morris’s summary judgment motion for equitable intervening rights.

Advertisement
© 2021 Finnegan, Henderson, Farabow, Garrett & Dunner, LLPNational Law Review, Volume XI, Number 55
Advertisement
Advertisement

TRENDING LEGAL ANALYSIS

Advertisement
Advertisement

About this Author

Elliott LaParne Intellectual Property and Pharmaceutical Litigation Attorney Finnegan, Henderson, Farabow, Garrett & Dunner law Firm
Associate

Elliott LaParne focuses on pharmaceutical patent litigation, with an emphasis on Abbreviated New Drug Application (ANDA) litigation.

Elliott applies his extensive research experience to successfully navigate complex pharmaceutical patent cases, combining his scientific background with his formidable litigation skills. As an undergrad, he enhanced his scientific knowledge by conducting Ph.D.-level research on the effects of nicotine on nicotinic acetylcholine receptors in human embryonic stem cells (hESCs) at the University of Pittsburgh School of Medicine. In law school, he authored...

202 408 4342
Advertisement
Advertisement