Blog March 23, 2020
Delay and Job Change Following Employer Bankruptcy Was Not Abandonment
- Person title
Fleming v. Escort Inc., ___F.3d ___ (Fed. Cir. Dec. 24, 2014) (TARANTO, Bryson, Hughes) (D. Id.: Winmill) (2 of 5 stars)
Federal Circuit affirms denial of patentee's JMOL motion where evidence supported jury's verdict of patent invalidity under §§ 102(g) and 103 for five of the asserted claims, and affirms denial of infringer's JMOL motion based on allegedly reissue.
Invalidity: The asserted reissue patents relate to radar detectors for detecting police signals. Rejecting patentee's challenge to the specificity of the evidence, the Federal Circuit ruled that the jury presentation was sufficiently specific to support invalidity, because an engineer named Steven Orr testified that he conceived of the invention in two of the claims more than a decade before the patent's priority date, and reduced to practice three years before that date. His testimony sufficiently described how this prior invention practiced the limitations of the two claims. Escort's expert also sufficiently showed how the prior art rendered all limitations of the other three invalidated claims obvious, with the necessary motivation to combine.
As to the patentee's challenge to corroboration, documentary evidence, including experimental results, sufficiently corroborated Mr. Orr's testimony concerning prior invention. Definitive proof in corroborating materials is not required under the rule of reason, nor is corroboration for every claim limitation.
As to the patentee's argument that Mr. Orr lost priority by abandoning his work, the Federal Circuit applied de novo review and rejected the argument. Although a delay existed between Mr. Orr's reduction to practice and his patent filing, Mr. Orr resumed active work before Mr. Fleming's claimed priority date. The delay in Mr. Orr's work was largely due to his then-employer's bankruptcy and his temporary employment at another firm, and "in these circumstances was not unreasonable and was consistent with a continuing commitment to pursuing the project to the full extent conditions allowed." Slip Op. at 13.
Reissue: §251 permitted reissue of Mr. Fleming's patents based on the original claims' inadequacy in capturing the invention's full scope. "Errors are not limited to slips of the pen but encompass—and most often are—deliberate drafting choices." Id. at 14.
The opinions expressed are those of the authors on the date noted above and do not necessarily reflect the views of Fish & Richardson P.C., any other of its lawyers, its clients, or any of its or their respective affiliates. This post is for general information purposes only and is not intended to be and should not be taken as legal advice. No attorney-client relationship is formed.
Blog November 4, 2019
Legal Alert: Arthrex, Inc. v. Smith & Nephew, Inc. - What Did the Federal Circuit Do?
Blog November 4, 2019
Legal Alert | Arthrex, Inc. v. Smith & Nephew, Inc. — What Did the Federal Circuit Do?
Blog August 17, 2018
En Banc Federal Circuit: Patentee's Service of Complaint, Followed by Voluntary Dismissal, Triggers IPR Clock
Blog October 5, 2017
Legal Alert: Federal Circuit Faults PTO's Approach to Claim Amendments During IPR, But Allows PTO to Try to Fix the Problem
Blog May 16, 2016
Software Claims Directed to Specific Improvements in Computer Operations May be "Non-Abstract"
Blog May 2, 2016
Corporate Residence Definition in Patent Cases Unchanged by Congressional Revisions to Venue Statute; Minimum Contacts Under Beverly Hills Fan Reaffirmed
Blog April 11, 2016
Claims Directed to Detection of Gene Variants Patent-Ineligible, Notwithstanding Mental Activity Requirement
Blog July 27, 2015
Judicial Review Available for Decision that a Patent Qualified for CBM Review; § 101 Review Appropriate in CBM Review
Blog July 8, 2015
Software Claim Addressing Concepts Long Known in Other Fields and Lacking Other Inventive Concept Is Not Patent Eligible
Blog May 19, 2023
Legal Alert: Amgen v. Sanofi
Blog May 16, 2023
ITC Monthly Wrap-Up: April 2023
Blog May 15, 2023
Legal Alert: Minimizing Patent TRO and PI Risk in Europe
Blog May 12, 2023
Texas Patent Litigation Monthly Wrap-Up: April 2023
Blog April 18, 2023
Texas Patent Litigation Monthly Wrap-Up: March 2023
Blog April 10, 2023
ITC Monthly Wrap-Up: March 2023
Blog February 10, 2023
President Biden Signs "Protecting American Intellectual Property Act of 2022" Into Law
Blog February 7, 2023
ITC Monthly Wrap-Up: January 2023
Article January 4, 2023
Attorneys Daniel Tishman and Joshua Rosefelt Author "ITC Year in Review" Article in IPWatchdog
Blog January 4, 2023
Texas Patent Litigation Monthly Wrap-Up: December 2022