On February 20, 2014, ALJ David P. Shaw issued the public version of Order No. 19 in Certain Crawler Cranes and Components Thereof(Inv. No. 337-TA-887).
According to the Order, Complainant Manitowoc Cranes, LLC (“Manitowoc”) filed a motion for summary determination that assignor estoppel prohibited respondents Sany America Inc. and Sany Heavy Industry Co., Ltd. (collectively, “Sany”) from challenging the validity of U.S. Patent Nos. 7,546,928 (the ‘928 patent) and 7,967,158 (the ‘158 patent) (collectively, “the asserted patents”). Manitowoc argued that there was no genuine issue of material fact that would cast doubt on whether Sany was prohibited from challenging the validity of the asserted patents due to assignor estoppel based on the following reasons: (1) assignor estoppel prevents the assignor of the patent, and those in privy with the assignor, from challenging the validity of the patent; (2) John Lanning is a named inventor and assignor of the ‘158 patent and, as such, is estopped from challenging the validity of the patent; (3) Sany is in privity with Mr. Lanning and therefore estopped from challenging the validity of the ‘158 patent; (4) Mr. Lanning is in privity with the named inventors of the ‘928 patent; (5) Mr. Lanning was involved in the design and development of Sany’s Crane, which is accused of infringing both of the asserted patents; and (6) because Mr. Lanning is in privity with the assignors of the ‘928 patent and Sany is in privity with Mr. Lanning, Sany is estopped from challenging the validity of both of the asserted patents.
Sany argued that, as to the ‘928 patent, Manitowoc sought to impermissibly expand the scope of privity to individuals having no connection to Sany. Specifically, Sany argued that the inventors knew and worked with Mr. Lanning, who was not an inventor, who then went to work for Sany and that by using Mr. Lanning as a straw-man, Manitowoc was attempting to create privity between the inventors and Sany. With respect to the ‘158 patent, Sany argued that there were material issues of fact as to whether Mr. Lanning was an inventor of the ‘158 patent.
After reviewing the parties’ arguments, ALJ Shaw found that there was at least a genuine issue of material fact as to whether Mr. Lanning and Sany are in privity with respect to the asserted patents. Accordingly, ALJ Shaw denied the motion.