from the United States District Court for the Eastern
District of Arkansas in No. 4:14-cv-00368-BRW, Senior Judge
Billy Roy Wilson.
D. Marts, Jr., Wright, Lindsey & Jennings LLP, Little
Rock, AR, argued for plaintiff-appellant. Also represented by
Richard Blakely Glasgow.
Andrew Crain, Thomas|Horstemeyer LLP, Atlanta, GA, argued for
defendant-appellee. Also represented by Dan Robert Gresham,
Wesley Austin Roberts.
Prost, Chief Judge, Reyna and Wallach, Circuit Judges.
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. 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.
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
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.
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.
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, ...