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Quest Integrity USA, LLC v. Cokebusters USA Inc.

Fed Cir Clarifies “Sham Affidavit” Doctrine

Quest Integrity USA, LLC v. Cokebusters USA Inc., __ F.3d __, 2019 WL ___ (Fed. Cir. May 21, 2019) (DYK, Taranto, Hughes) (D. Del.: Robinson) (2 of 5 stars)

Fed Cir part-affirms, part-reverses summary judgment that claims were obvious due to on-sale bar. Quest’s patent relates to the display of inspection data collected from a commercial furnace, such as in a refinery. The district court did not err in finding three of Quest’s claims invalid in view of Quest’s commercial performance of furnace tube inspection services, and transmission of reports developed using the later-patented method, more than a year before the filing date. It rejects Quest’s contention that the reports were developed using a method excluded from the claims; analyzing the file history, it concludes that certain amendments to the claim did not exclude the technique at issue.

The district court erred, however, in finding an absence of material fact dispute as to the application of the on-sale bar to two remaining Quest claims. The issue was whether the software used during the pre-filing inspection service practiced a certain limitation. Applying Third Circuit law, the district court abused its discretion in excluding as “sham declarations” two affidavits, presented by Quest, contending that the technology addressed by that limitation was not present in the software at issue. Per Baer, 392 F.3d 609 (3rd Cir. 2004), sham affidavit doctrine is generally invoked where an affidavit contradicts the affiant’s own prior deposition testimony. The district court erred in using it to exclude the first of the two declarations; the opinion finds that the declarant there was not contradicting his own prior testimony, but was potentially contradicting testimony from another. The district court also erred in using it to exclude the second declaration—where there was an alleged contradiction to the declarant’s own prior testimony. The opinion describes how the second declarant “offered a plausible explanation” for a misstatement in deposition, and notes that during deposition the declarant had not been provided with key source code that he later stated would have changed his testimony. There was also independent evidence in the record to support the declaration.

In a footnote the opinion also notes that sham affidavit doctrine may not be invoked to exclude a declaration based on inconsistency with an invention disclosure. Per Baer, the doctrine is limited to prior sworn testimony.

KEYWORDS: EVIDENCE; SHAM AFFIDAVIT; SUMMARY JUDGMENT; INVALIDITY; ON SALE BAR