In Fleming v. Escort Inc., the Federal Circuit noted that the error on which Fleming’s reissue patents were based was a “classic” type of error justifying reissue: the inventor’s failure to appreciate the full scope of his invention, and the inadequacy of the original claims. This case also addresses issues under 35 USC § 102(g), which remains relevant for most patents in force today.
The Patents At Issue
The patents at issue were Fleming’s reissue patents RE39,038 and RE40,653, directed to radar detectors that use Global Positioning Satellite (GPS) and related information to reduce false alarms.
The District Court Proceedings
Fleming sued Escort for patent infringement, which was tried to a jury. The jury found for Fleming on validity and infringement of most of the asserted claims, but invalidated five claims based on prior invention under 35 USC § 102(g). The district court denied Fleming’s motion for judgment as a matter of law to reverse those findings, and also denied Escort’s motion for judgment that the patents were invalid as not being based on a proper reissue error under 35 USC § 251.
The Federal Circuit Decision
The Federal Circuit opinion was authored by Judge Taranto, and joined by Judges Bryson and Hughes.
The court first addressed Fleming’s appeal of the invalidity findings under 35 USC § 102(g), based on prior invention by Orr. Fleming challenged the corroboration of the oral testimony of Orr, but the Federal Circuit found several documents to adequately corroborate Orr’s testimony.
Fleming is correct that none of the corroborating evidence constitutes definitive proof of Orr’s account or discloses each claim limitation as written. But the corroboration requirement has never been so demanding. …. It is 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. …. The evidence presented here sufficiently does that.
Fleming also asserted that Orr’s prior invention could not anticipate, because Orr had “abandoned, suppressed or concealed” the invention, but the Federal Circuit disagreed.
First, the court noted that the timing and duration of the alleged abandonment did not shield Fleming from the effect of Orr’s prior invention:
Fleming’s position has been that his priority date is April 14, 1999, when he filed his patent application. That date is later than the dates of Orr’s conception (1988) and reduction to practice (1996) … . It also is later than the latest possible date—summer 1998—that the evidence establishes Orr resumed work on his prior invention …. [E]ven if Orr had abandoned his invention before summer 1998, the defense of abandonment is properly rejected on the ground that Orr resumed his active work before Fleming’s April 1999 priority date.
Even looking at an earlier time period, the court found no evidence to disturb the district court decision:
[I]f we assumed a May 1998 conception date for Fleming … the crucial period for the abandonment analysis would be the time between Cincinnati Microwave’s February 1997 bankruptcy and Orr’s July 1998 employment at Escort. But what occurred during that period does not warrant an inference of suppression, concealment, or abandonment. At 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. The delay of active work in these circumstances was not unreasonable and was consistent with a continuing commitment to pursuing the project to the full extent conditions allowed. In brief, the concepts of abandonment, suppression, and concealment do not fit the facts as reasonably found by the jury.
Thus, the Federal Circuit upheld the invalidity verdict.
Turning to the reissue issue, the Federal Circuit first quoted the applicable version of the reissue statute, 35 USC § 251:
Whenever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent.
Escort alleged that the “error” on which the Fleming reissues were based were not proper reissue errors, but the Federal Circuit disagreed.
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. …. It identifies a deficient understanding of some combination of fact and law bearing on the meaning of claim language, the inventions disclosed in the written description, and how particular language does or does not map onto products or processes that could be claimed under section 251 consistent with the written description.
The Federal Circuit cited earlier case law for the premise that “[a] drafting choice that rested on ‘no cognizable false or deficient understanding of fact or law,’ but that was, say, an eyes-open choice made to secure the patent, ‘is not “error” as required by section 251,” but found that Fleming’s error–writing the original patents from the perspective of a “programmer”–was not merely a ”now-regretted choice,” but a valid “error” upon which reissue could be granted. The Federal Circuit also rejected the argument that “the fact that it was marketplace developments that prompted Fleming to reassess his issued claims and to see their deficiencies” undermined “the qualifying character” of the error.
Erroneous understandings of the written description or claims are just that, regardless of what triggered the recognition of error in those understandings.
The Federal Circuit therefore affirmed the district court’s judgment upholding the jury verdict.
Continued Relevance of § 102(g) and Impact of the AIA
While the America Invents Act eliminates § 102(g) for applications and patents that fall under its effective date, a defense of “prior invention” under that section remains relevant to existing patents that were granted under the pre-AIA version of 35 USC § 102, and the ability to antedate prior art by proving an earlier date of invention remains an option for pending applications where all claims have an effective filing date prior to March 15, 2013. On the other hand, the fact pattern here underscores the potential impact of the AIA. Orr was a first inventor, but filed his patent application two months after Fleming. Under the AIA, Orr’s earlier work would not be prior art to Fleming if it was not published before Fleming’s filing date, but Fleming’s earlier-filed patent application would be prior art to Orr that Orr would not be able to swear behind.