The US Court of Appeals for the Federal Circuit held that prior acts related to earlier-issued claims did not lead to equitable estoppel for amended claims that issued in a later re-examination proceeding. John Bean Technologies Corp. v. Morris & Associates, Inc., Case No. 17-1502 (Fed. Cir., Apr. 19, 2018) (Reyna, J).

John Bean Technologies competes with Morris & Associates over chillers designed for poultry carcasses. John Bean owns a patent that it alleged covers Morris’s competing chiller. When Morris learned of John Bean’s allegations, Morris informed John Bean of invalidating prior art. In its demand letter, Morris invited John Bean to refute its invalidity position, but John Bean never responded. Relying on John Bean’s silence, Morris continued to sell allegedly infringing chillers.

Eleven years later, John Bean submitted its patent for ex parte re-examination at the US Patent and Trademark Office (PTO) using the prior art that Morris had identified. During re-examination, the original claims were invalidated and cancelled. John Bean offered significant amendments, and the PTO eventually allowed the amended claims. Once the new claims issued, John Bean sued Morris for infringement on the newly issued claims. Morris moved to dismiss the suit based on estoppel arising from John Bean’s knowledge that Morris had been selling an allegedly infringing chiller for many years and John Bean’s failure to respond to Morris’s demand letter. The district court found that John Bean’s delay and Morris’s reliance on John Bean’s silence equitably estopped John Bean from enforcing its patent. John Bean appealed.

The Federal Circuit disagreed and reversed the district court’s decision. The Court held that equitable estoppel could not apply because Morris’s previous demand letter related to the originally issued claims, and the infringement suit was based solely on the newly issued claims. Because the re-examination process resulted in new and substantively narrower claims, John Bean was not equitably estopped from asserting the new claims. The Federal Circuit analogized the situation to that of pending claims where estoppel cannot apply until after the pending claims have issued.

The Federal Circuit left open the possibility that estoppel may still apply to a re-examined patent where newly issued claims had minor amendments or could be considered identical for purposes of infringement. The Federal Circuit also noted that Morris’s allegations of absolute and equitable intervening rights may nevertheless bar John Bean’s infringement suit.