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John Bean Technologies Corp. v. Morris & Associates, Inc.

United States Court of Appeals, Federal Circuit

April 19, 2018

JOHN BEAN TECHNOLOGIES CORPORATION, Plaintiff-Appellant
v.
MORRIS & ASSOCIATES, INC., Defendant-Appellee

          Appeal from the United States District Court for the Eastern District of Arkansas in No. 4:14-cv-00368-BRW, Senior Judge Billy Roy Wilson.

          Gary D. Marts, Jr., Wright, Lindsey & Jennings LLP, Little Rock, AR, argued for plaintiff-appellant. Also represented by Richard Blakely Glasgow.

          Norman Andrew Crain, Thomas|Horstemeyer LLP, Atlanta, GA, argued for defendant-appellee. Also represented by Dan Robert Gresham, Wesley Austin Roberts.

          Before Prost, Chief Judge, Reyna and Wallach, Circuit Judges.

          Reyna, Circuit Judge.

         John Bean Technologies Corp. appeals from a decision by the United States District Court for the Eastern District of Arkansas holding that its patent infringement claims are barred by the affirmative defenses of equitable estoppel and laches.[1] Because the asserted claims in this action were substantively amended or added following ex parte reexamination in 2014, and the plaintiff only sought damages for infringement of the reexamined claims, the district court abused its discretion in finding equitable estoppel based on activity beginning in 2002, twelve years prior to the issuance of the reexamination certificate. We therefore reverse the district court's grant of summary judgment based on its finding of equitable estoppel, and remand for proceedings consistent with this opinion.

         Background

         John Bean Technologies Corp., through its predecessor-in-interest, Cooling & Applied Technology, Inc. (collectively "John Bean") owns U.S. Patent No. 6, 397, 622 ("'622 patent"), which is directed to a "high-side" auger-type chiller for cooling poultry carcasses. J.A. 35. The '622 patent issued on June 4, 2002. At the time of its issuance, the '622 patent contained two claims, independent claim 1 and dependent claim 2.

         Appellee Morris & Associates, Inc. ("Morris") competes with John Bean in the poultry chiller market. They are the only two poultry chiller manufactures in the United States, and have frequently found themselves on opposing sides of a courtroom. J.A. 8, 48. On June 27, 2002, shortly after the '622 patent issued, Morris's counsel sent a letter to John Bean's counsel, informing him that John Bean had been contacting Morris's customers and that John Bean "representatives have asserted to the customers that the equipment being sold by Morris infringes U.S. Patent 6, 397, 622 recently issued to [John Bean]." J.A. 263 ("Demand Letter"). The Demand Letter notified John Bean that Morris believed the '622 patent to be invalid based on multiple prior art references, and concluded with the following demand:

If [John Bean] is not convinced that its patent 6, 397, 622 is invalid, I request that you provide the information necessary to show why each one of [the prior art references] do not anticipate or make obvious the claims of the patent.
Because of the several reasons for invalidity of the '622 patent, we demand that you advise [John Bean] to terminate its statements that the sale of the Morris Poultry Chiller will infringe the '622 patent. Such statements on behalf of [John Bean] is [sic] misleading because the patent is invalid and such statements persuade the customers to purchase the [John Bean] poultry chiller based on the invalid patent. This comprises unfair competition.
Now that [John Bean] has been informed of the invalidity of its patent, any statements that assert infringement of U.S. Patent 6, 397, 622 made from this point on are likely to be met with a suit for unfair competition.

         J.A. 266. The prior art asserted in the Demand Letter included a primary reference for both anticipation and obviousness invalidity arguments, U.S. Patent No. 5, 868, 000 ("'000 patent"). J.A. 264-65. It is undisputed that John Bean both received and never responded to the Demand Letter. J.A. 3, 284 (admitting that John Bean received the Demand Letter through its counsel), 279 (admitting through its company representative that John Bean did not respond to the Demand Letter). With no response from John Bean, Morris continued to develop and sell its chillers.

         On December 18, 2013, eleven years after the '622 patent first issued, John Bean filed a request for ex parte reexamination of the '622 patent with the U.S. Patent and Trademark Office. J.A. 137. The Patent Office granted John Bean's request for ex parte reexamination, and rejected both claims of the '622 patent as anticipated or rendered obvious by other prior art patents. J.A. 3. This included an anticipation rejection based on the '000 patent, and obviousness rejections with the '000 patent as the primary reference. In response to the rejections, John Bean amended both its specification and its claims. In addition to amending the two original claims of the '622 patent, John Bean added six additional claims, ...


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