Docket Nos. 2015-1370, -1426
PROST, MAYER, REYNA
March 23, 2016
Brief Summary: DC decisions of no infringement based on Markman claim construction and barring B/E from alleging invalidity under assignor estoppel affirmed.
Summary: MAG appealed from DC grant of SJ of noninfringement regarding US 6,536,054; 6,536,055; and 6,353,942 relating to the quick repair of vaccuum toilets found on airplanes using “line replaceable units” (“LRUs”) (components that are easily replaced). After a Markman hearing, the DC construed the term “toollessly” to mean “without the use of any tools” (‘054 patent), LRU to mean “a single module targeted for easy replacement in the field” (‘055 patent), and “an out-turned flange supported by the top of the support structure” to mean an “outside rim or edge turned away from the sidewall, transferring loads to the top of the support structure.” In making its noninfringement determination, the DC concluded B/E’s toilets do not include any of these features. The FC disagreed with MAG that B/E’s toilet did not require a tool to remove it (“some kind of tool is necessary”) and that “the specification clearly indicates that the invention of the patent is that no tools of any kind are necessary” (including a coin). MAG also argued the discharge valve and flush control unit qualify as an LRU but the DC and FC panel disagreed (e.g., “MAG also presented no evidence that the two components have ever been removed at the same time by a customer.”) And MAG argued two structures on B/E’s toilet bowl are “out-turned flanges” but the FC panel agreed with the DC that the limitation was not met. The DC also granted MAG’s motion for SJ of no invalidity, and B/E appealed this ruling because it contended, the DC “improperly applied assignor estoppel to bar if from asserting that the patents-in-suit are invalid.” The FC opinion explained that “[a]ssignor estoppel is an equitable remedy that prohibits an assignor of a patent, or one in privity with an assignor, from attacking the validity of that patent when he is sued for infringement by the assignee” (Diamond Sci., FC 1988; Shamrock Techs., FC 1990). An inventor who used to work for MAG and “now works for B/E” previously assigned his rights to one of the patents-in-suit to MAG. The DC considered eight “Shamrock” factors (e.g., assignor’s leadership role/ownership role at the new company, whether new company began manufacturing infringing goods after hiring assignor) and concluded he was in privity with B/E and thus B/E was barred from alleging invalidity. The FC panel did not find clear error with the DC decision because, e.g., “he was hired specifically to develop the toilets that are now alleged to be infringing” (Intel, 1991). The assignor estoppel decision was therefore affirmed.