Federal Circuit Nos. 2014-1331, -1371
Fleming owns two reissue patents relating to GPS enabled radar detectors. Fleming sued Escort for infringement of these two patents. Escort challenged the validity of the patents on the basis of a prior invention by contending that Orr, a consultant doing work for Escort, had invented a GPS radar detector before Fleming.
The jury found some of Fleming's asserted claims to be infringed and valid, while invalidating certain other claims on the basis of Orr’s alleged prior invention. Fleming unsuccessfully sought judgment as a matter of law to reverse the invalidity finding, arguing that the testimony of Orr’s prior invention was conclusory, insufficiently corroborated, and that his “invention” had been abandoned, suppressed or concealed. Fleming then appealed the finding of invalidity. The Federal Circuit found that sufficient evidence existed to support the verdict, and that Orr’s testimony of prior inventions was sufficiently corroborated by documentary evidence. The Federal Circuit rejected the argument that the corroboration requirement requires definitive proof of Orr’s account or that it discloses each claim requirement as written, noting that the corroboration requirement “has never been so demanding.” The Federal Circuit also found that there was no evidence that Orr had suppressed, concealed, or abandoned the prior invention, finding at most a “reasonable pause in active work” when the rights to the invention were being transferred from one owner to another owner during a period of bankruptcy.
On cross appeal Escort argued that Fleming’s patents, as reissue patents, were invalid because there was no error in the original patents, which is a prerequisite to obtaining a reissue patent.
The Federal Circuit found that "[e]rrors are not limited to slips of the pen," but include "deliberate drafting choices." In this case, Fleming "failed to appreciate the full scope of his invention and the inadequacy of the original claims." The Federal Circuit explained that this misunderstanding of some combination of fact and law, that directly relates to the chosen claim language, is "a classic reason that qualifies as error." Accordingly, the reissue patents were not found to be invalid as lacking an error in the original patent.