United States: Erroneous Understanding Of Written Description And Claims Constituted Sufficient "Error" For Reissue, Regardless Of What Triggered Recognition Of The Error

In Fleming v. Escort, Inc., Nos. 14-1331, -1371 (Fed. Cir. Dec. 24, 2014), the Federal Circuit affirmed the district court's judgment upholding the jury's validity and invalidity verdicts for U.S. Patent Nos. RE39,038 ("the '038 patent") and RE40,653 ("the '653 patent").

Hoyt Fleming owns the '038 and '653 patents, both directed to methods for incorporating, as well as apparatuses that incorporate, a Global Positioning Satellite ("GPS") into radar detectors for detecting police signals.  Fleming sued Escort, Inc. and Beltronics USA, Inc. (collectively "Escort") for infringement, and Escort responded by contending that its consultant, Steven Orr, had invented a GPS-incorporating radar before Fleming did.  While the jury found most of Fleming's asserted claims to be infringed and not invalid, it also found five claims of the '038 patent to be invalid as anticipated and obvious, in part over Orr's prior invention.

Fleming sought JMOL to reverse the jury's five invalidity determinations, and Escort sought JMOL that Fleming's patents were invalid because Fleming had not identified an "error" in his original patent as required under 35 U.S.C. § 251 for securing a reissue patent.  The district court denied both motions, and both parties appealed.

"The asserted error here is that, when drafting his original patent, Fleming failed to appreciate the full scope of his invention and the inadequacy of the original claims for properly capturing the full scope.  This is a classic reason that qualifies as error."  Slip op. at 14.

On appeal, the Federal Circuit concluded that, contrary to Fleming's arguments, there was sufficiently specific factual support for the invalidity determinations.  The Court noted that the jury's invalidity verdict rested on two overlapping classes of findings, namely, Orr's prior invention and the teachings of the asserted combinations of Orr's prior invention with various prior art references.  The Court stated that in light of the testimony, including by Escort's expert, it could not say that the invalidity challenge was supported by only conclusory testimony and unexplained prior art documents.

The Court further concluded that Orr's testimony of prior invention was sufficiently corroborated by the documentary evidence.  While the Court agreed with Fleming that none of the corroborating evidence constituted definitive proof of Orr's account of invention or disclosed each claim limitation as written, "the corroboration requirement has never been so demanding."  Slip op. at 10 (citing Cooper v. Goldfarb, 154 F.3d 1321, 1331 (Fed. Cir. 1998)).  The Court reasoned that the evidence was "independent evidence that, as a whole, makes credible the testimony of the purported prior inventor with regard to conception and reduction to practice of the invention as claimed."  Id.

The Court also rejected Fleming's challenge that Orr lost priority of invention due to abandonment, suppression, or concealment.  The Court reasoned that there was no evidence of any active efforts to suppress or conceal, and that the timing of Orr's activities leading to his patent application did not warrant an inference of abandonment, suppression, or concealment.  The Court further noted that Fleming's defense of abandonment was properly rejected on the ground that Orr resumed his active work before Fleming's prior date, and that, "[a]t most, there was a reasonable pause in active work:  the rights to the invention were transferred from one owner to a new owner during a period of bankruptcy; the new owner concentrated its initial efforts on products ready for immediate sale; and even during that period, the new owner maintained communication with Orr and made efforts to bring him to the firm precisely to resume the work needed to perfect the prior invention."  Id. at 13.  The Court thus affirmed the district court's judgment upholding the jury's invalidity verdict with respect to five claims.

Turning to Escort's cross appeal, the Federal Circuit rejected Escort's contention that Fleming's reissue patents were invalid because there was no requisite "error" in the original patent.  The Court reasoned that the asserted error here—namely, that during drafting, Fleming failed to appreciate the full scope of his invention and the inadequacy of the original claims for properly capturing the full scope—was "a classic reason that qualifies as error."  Id. at 14.  The Court further noted that neither Fleming's statement that he wrote the original patent from the perspective of a "programmer" nor the fact that marketplace developments prompted Fleming to reassess his claims did not alter the qualifying character of the reason for reissue.  "Erroneous understandings of the written description or claims are just that, regardless of what triggered the recognition of error in those understandings."  Id. at 15.  The Court thus affirmed the district court's judgment upholding the jury's validity verdict.

This article previously appeared in Last Month at the Federal Circuit - January 2015

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