in John Bean Technologies Corp. v. Morris & Associates, Inc., [2017-1502] (April 19, 2018), the Federal Circuit reversed the district court’s grant of summary judgment based on its finding of equitable estoppel, and remanded for proceedings consistent with this opinion.

In 2002, Morris wrote Bean that its recently issued U.S. Patent 6,397,622 was invalid over certain prior art, and demanding cessation of statements regarding infringement of the patent to Morris’ customers.  Eleven years later, Bean filed a request for ex parte reexamination, which after amending the existing claims to overcome the art identified by Morris, and adding new claims, issued in 2014.

Bean sued Morris on the reexamined U.S. Patent 6,397,622, and the district court granted Morris summary judgment based upon equitable estoppel.  Equitable estoppel which is an absolute bar to a patentee’s infringement action, 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 Federal Circuit noted the unusual nature of the case — namely that the finding of equitable estoppel was based on conduct before the issuance of the rights being asserted — the reexamination claims.  However relying upon the principles undergirding
the issuance of reexamination claims, i.e. that (1) reissue claims cannot be broader than the original claims; and (2) a patentee cannot assert reexamination claims to obtain damages prior to the issuance date of the reexamination certificate (unless they are identical in scope).  The Federal Circuit found that the amendments made during reexamination were both substantial and substantive. The Federal Circuit concluded that because the asserted claims did not exist at, or were substantively altered since, the time Morris wrote to Bean, Bean could not have engaged in misleading conduct or silence with respect to those claims.

The Federal Circuit allowed that there may be cases where the reexamined
claims contain fewer amendments such that the reexamined claims do not differ in
scope from the original claims, and might be considered identical for purposes of applying equitable estoppel, but found that is not the situation in the present case, and thus the district court abused its discretion in applying equitable estoppel to bar Bean’s infringement action.