Search Team

Search by Last Name
A
B
C
D
E
F
G
H
I
J
K
L
M
N
O
P
Q
R
S
T
U
V
W
X
Y
Z

John Bean Technologies Corp. v. Morris & Associates, Inc.

Pre-Reexamination Conduct May Not Support Equitable Estoppel for Substantially Modified Reexamination Claims

John Bean Technologies Corp. v. Morris & Associates, Inc., __ F.3d __, 2018 WL 1866907 (Fed. Cir. Apr. 19, 2018) (Prost, REYNA, Wallach) (E.D. Ark.: Wilson) (3 of 5 stars)

Fed Cir reverses summary judgment of equitable estoppel. The district court abused its discretion by extending equitable estoppel against assertion of certain reexamination claims, based on conduct occurring substantially before reexamination. Regardless of whether a John Bean’s failure to respond to a 2002 letter from Morris alleging invalidity of John Bean’s patent as it then existed could have supported an equitable estoppel finding, the patent had gone through ex parte reexamination, and new claims, including substantive revisions, issued in 2014. As such, Morris’s 2002 validity analysis “may no longer be accurate.” Op. at 9. The opinion also discusses how, in the presence of such changes to the claims, John Bean may not seek damages under the reexamination claims for pre-reexamination activity. And, per Radio Systems, 709 F.3d 1124 (Fed. Cir. 2013), equitable estoppel does not generally apply to claims not yet issued at the time of the conduct at issue.

KEYWORDS: EQUITABLE ESTOPPEL; EX PARTE REEXAMINATION