Federal Circuit Summaries

Before Prost, Reyna, and Wallach. Appeal from the United States District Court for the Eastern District of Arkansas.

Summary: Pre-reexamination conduct cannot be a basis for equitable estoppel if the asserted claims were substantively amended and narrowed during reexamination.

John Bean and Morris are competitors in the poultry chiller market. John Bean told Morris' customers that Morris' product infringed John Bean's patent. Morris sent a letter to John Bean challenging the validity of the patent. John Bean received the letter, but never responded. More than ten years later, John Bean filed an ex parte reexamination request and amended the claims. After the reexamination certificate issued, John Bean sued Morris. The District Court granted summary judgment in favor of Morris, finding that John Bean's suit was barred by equitable estoppel. The District Court relied primarily on Morris' letter to John Bean as showing that John Bean belived Morris was selling an infringing product and waited years to sue.

The Federal Circuit reversed. At the time of Morris' letter, John Bean could not have engaged in misleading conduct or silence with respect to the reexamined claims because those claims did not issue until years later. Thus, the district court erred in granting summary judgment based on equitable estoppel.