Docket No. 2014-1331, -1371
TARANTO, BRYSON, HUGHES
December 24, 2014
Brief Summary: Evidence of prior invention was found to be sufficient and there was no evidence “suppression, concealment, or abandonment” between conception and reduction to practive. Fleming’s failure to “appreciate the full scope of his invention” was “a classic reason that qualifies as an error” for a reissue.
Summary: Fleming appealed jury finding of invalidity of five claims of RE39,028 and RE40,653 relating to GPS-incorporating radar detectors for detecting police signals (other claims infringed and not invalid). Escort cross-appealed that Fleming’s reason for seeking reissue was not an “error”. The appeal results from the DC denial of each party’s JMOL requests. Escort’s main defense was that its consultant had invented the claimed radar detector before Fleming’s April 14, 1999 priority date (allegedly conceived of in 1988, application filed June 14, 1999). The jury invalidated one claim for anticipation by the consultant’s prior invention. Another claim was invalidated for obviousness in combination by the consultant’s invention and two prior art patents. Three other claims were invalidated by the consultant’s invention and two prior art patents. The FC panel first concluded that “[t]here was specific evidence sufficient to support the verdict” (e.g., expert testimony), disagreeing with Fleming’s argument. It also determined the consultant’s testimony “was sufficiently corroborated by the documentary evidence” (e.g., 1992 GPS experiments as well as notes and a letter from 1996). While the FC agreed with Fleming that “none of the corroborating evidence constitutes definitive proof of [the consultant’s] account or discloses each claim as written”, it also explained that “the corroboration requirement has never been so demanding” (“a flexible, rule-of-reason demand for 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”). Thus, it concluded the evidence of prior invention was sufficient. Fleming also argued that even if priority of invention was determined, priority was lost under 35 USC §102(g)(2) (disqualification as “abandoned, suppressed, or concealed” which may be shown by “unreasonable delay in making the invention publicly known” (Dow Chem., FC 2001); delay “excused ‘if the inventor continued to refine, perfect, or improve the invention’” (Eolas, FC 2005); “even ‘a long period of inactivity need not be a fatal forfeiture, if the first inventor resumes work on the invention before the second inventor enters the field’” (Paulik, FC 1985)). Here, the FC did not “infer suppression, concealment, or abandonment”. Regarding Escort’s cross-appeal regarding the reissue “error”, the opinion explained that these “are not limited to slips of the pen but encompass-and most often are-deliberate drafting choices”, although “not all choices qualify (“it is important whether deficient understandings…gave rise to the patent choice that reissue is being invoked to correct” (In re Dinsmore, FC 2014)). Here, it was determined that “Fleming failed to appreciate the full scope of his invention…a classic reason that qualifies as an error.” Thus, the FC panel concluded that challenge “meritless”.