Delay and Job Change Following Employer Bankruptcy Was Not Abandonment

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.