John Bean v. Morris & Associates was decided on April 19, 2018 on appeal from the Eastern District of Arkansas. In 2002, after plaintiff John Bean had contacted defendant Morris’ customers alleging infringement, Morris sent John Bean a letter notifying John Bean that its patent was invalid based on multiple prior art references. John Bean received but never responded to the letter. In 2013, John Bean filed a request of ex parte reexamination. In response to a rejection of its claims by the USPTO, John Bean amended the two original claims and added six new claims. In 2014, the USPTO issued a reexamination certificate allowing the amended and newly added claims. That same year, twelve years after the original patent issued, John Bean filed a complaint against Morris. John Bean did not seek damages for any activity prior to the reexamination certificate. The district court granted summary judgment in favor of Morris, holding that the infringement action was barred by laches and equitable estoppel because John Bean knew of the allegedly infringing product in 2002 and filed suit in 2014. John Bean appealed.
The Federal Circuit reversed the grant of summary judgment based on equitable estoppel and laches, and remanded.
The Federal Circuit reviews the district court’s “application of equitable estoppel for abuse of discretion.” The defense of equitable estoppel consists of three elements: “(1) the patentee engages in misleading conduct that leads the accused infringer to reasonably infer that the patentee does not intend to assert its patent against the accused infringer; (2) the accused infringer relies on that conduct; and (3) as a result of that reliance, the accused infringer would be materially prejudiced if the patentee is allowed to proceed with its infringement action.”
The district court abused its discretion in extending equitable estoppel to the reexamined claims. “[W]hen claims are narrowed during reexamination to overcome prior art, as is the case here, any validity analysis of the newly issued claims differs from that of the original broader claims.” Thus, Morris’s challenge to the validity of John Bean’s patent in the 2002 letter “may no longer be accurate. Indeed, it would not be wrong for John Bean to narrow its claims in response to the [Morris’s] Letter.” Second, the amendments made during reexamination were “both substantial and substantive.” So John Bean was “only entitled to damages for the period after the reexamination certificate issue[d].” Lastly, equitable estoppel does not apply to pending claims during the examination of a patent application, “even if those claims when issued could claim priority to a parent patent subject to equitable estoppel.” “[C]laims that have not issued cannot be asserted, and therefore no misleading conduct or silence could be present.” Because “the asserted claims did not exist at, or were substantively altered since, the time Morris sent John Bean the [letter], John Bean could not have engaged in misleading conduct or silence with respect to those claims.”
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John Bean Techs. Corp. v. Morris & Assocs., 887 F.3d 1322 (Fed. Cir. 2018)