{"id":2014,"date":"2018-04-19T11:04:30","date_gmt":"2018-04-19T15:04:30","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=2014"},"modified":"2018-04-22T12:13:00","modified_gmt":"2018-04-22T16:13:00","slug":"reexamined-claims-were-sufficiently-different-that-equitable-estoppel-did-not-apply","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=2014","title":{"rendered":"Reexamined Claims were Sufficiently Different that Equitable Estoppel Did Not Apply"},"content":{"rendered":"

in John Bean Technologies Corp. v. Morris & Associates, Inc.<\/a>, [2017-1502] (April 19, 2018), the Federal Circuit\u00a0reversed the district court\u2019s grant of summary\u00a0judgment based on its finding of equitable estoppel, and\u00a0remanded for proceedings consistent with this opinion.<\/p>\n

In 2002, Morris wrote Bean that its recently issued\u00a0U.S. Patent 6,397,622 was invalid over certain prior art, and demanding cessation of statements regarding infringement of the patent to Morris’ customers.\u00a0 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.<\/p>\n

Bean sued Morris on the reexamined\u00a0U.S. Patent 6,397,622, and the district court granted Morris summary judgment based upon equitable estoppel.\u00a0\u00a0Equitable estoppel which is an absolute bar to a patentee\u2019s\u00a0infringement action, consists of three elements: (1) the\u00a0patentee engages in misleading conduct that leads the\u00a0accused infringer to reasonably infer that the patentee\u00a0does not intend to assert its patent against the accused\u00a0infringer; (2) the accused infringer relies on that conduct;\u00a0and (3) as a result of that reliance, the accused infringer\u00a0would be materially prejudiced if the patentee is allowed\u00a0to proceed with its infringement action.<\/p>\n

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.\u00a0 However relying upon the\u00a0principles undergirding
\nthe issuance of reexamination claims, i.e. that (1) reissue claims cannot be broader than the original claims; and (2) a patentee cannot\u00a0assert\u00a0reexamination claims to obtain damages prior to the\u00a0issuance date of the reexamination certificate (unless they are identical in scope).\u00a0 The Federal Circuit found that the amendments made during reexamination\u00a0were both substantial and substantive. The Federal Circuit concluded that\u00a0because the asserted claims did not exist at, or were\u00a0substantively altered since, the time Morris wrote to\u00a0Bean, Bean could not have\u00a0engaged in misleading conduct or silence with respect to\u00a0those claims.<\/p>\n

The Federal Circuit allowed that there may be cases where\u00a0the reexamined
\nclaims contain fewer amendments such that the reexamined claims do not differ in
\nscope from the original claims, and might be considered identical for\u00a0purposes\u00a0of applying equitable estoppel, but found that is not the situation in the present case, and thus the district court\u00a0abused its\u00a0discretion in applying equitable estoppel to bar\u00a0Bean\u2019s infringement action.<\/p>\n","protected":false},"excerpt":{"rendered":"

in John Bean Technologies Corp. v. Morris & Associates, Inc., [2017-1502] (April 19, 2018), the Federal Circuit\u00a0reversed the district court\u2019s grant of summary\u00a0judgment based on its finding of equitable estoppel, and\u00a0remanded for proceedings consistent with this opinion. In 2002, Morris … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[76],"tags":[],"class_list":["post-2014","post","type-post","status-publish","format-standard","hentry","category-estoppel"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2014","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=2014"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2014\/revisions"}],"predecessor-version":[{"id":2015,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2014\/revisions\/2015"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2014"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2014"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2014"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}