Categories: Civil Procedure Date: Feb 3, 2015 Title: Fleming v. Escort Inc.: Determining the Sufficiency of Testimony
|Title||Fleming v. Escort Inc., 2014-1331, -1371 (Fed. Cir. Dec. 24, 2014).|
|1. Fleming’s first contention on appeal [...] is that Escort’s evidence in support of invalidity was insufficiently specific to support the verdict.|
Fleming, at *6.
|2. Fleming also challenges the proof of Orr’s prior invention by invoking the principle that “oral testimony by an alleged inventor asserting priority over a patentee’s rights ... must be supported by some type of corroborating evidence.” |
Id. at *8.
|3. Fleming’s final challenge is that, even if Orr had priority of invention by virtue of his activities through 1996, he lost priority under 35 U.S.C. § 102(g)(2)’s disqualification of prior inventions that have been “abandoned, suppressed, or concealed.” |
Id. at *10.
|1. We conclude that there was sufficiently specific factual support for the invalidity determinations [and because broad claims do not require extensive testimony and expert’s testimony on radar communication was adequate in view of the scope of the claims].|
Id. at *6 (text added).
|2. Fleming is correct that none of the corroborating evidence constitutes definitive proof of Orr’s account or discloses each claim limitation as written. But the corroboration requirement has never been so demanding. [...] It is a flexible, rule-of- reason demand for independent evidence that, as a whole, makes credible the testimony of the purported prior inventor with regard to conception and reduction to practice of the invention as claimed. [...]|
Id. at *10 (internal citations omitted).
|3. In this case, there is no evidence of any active efforts to suppress or conceal (because during the entire period between conception and filing, the inventor was either actively improving the invention, or engaged in another project after bankruptcy of his firm.).|
Id. at *11 (text added).
|Procedural History||The district court in this case refused to disturb a jury verdict concerning two reissue patents. The jury found for the patentee on infringement and validity as to most of the asserted claims, but it invalidated five claims. The patentee, Hoyt Fleming, appeals the five invalidity determinations, arguing that (1) the testimony offered to establish invalidity was insufficiently specific to support the verdict; (2) there was insufficient corroboration of the prior invention relied on for the invalidity determinations; and (3) the prior invention, if it existed, was abandoned, suppressed, or concealed, disqualifying it from invalidating the claims. The adjudicated infringers, Escort, Inc., and Beltronics USA, Inc. (collectively, Escort), cross- appeal on the ground that all of the asserted claims are invalid because Fleming’s reason for seeking reissue did not meet the “error” precondition for obtaining reissue.|
Fleming, at *2.
|Legal Reasoning (TARANTO, Bryson, Hughes)|
|1. Specificity of Evidence|
|Legal Standard, evidence||“[g]eneral and conclusory testimony . . . does not suffice as substantial evidence of invalidity.” Koito Mfg. Co. v. Turn-Key-Tech, LLC, 381 F.3d 1142, 1152 (Fed. Cir. 2004); see CytoLogix Corp. v. Ventana Med. Sys., Inc., 424 F.3d 1168, 1176 (Fed. Cir. 2005); Motorola, Inc. v. Inter- digital Tech. Corp., 121 F.3d 1461, 1473 (Fed. Cir. 1997). It is not enough simply to introduce a prior-art reference into the record, with no testimony showing where the limitations of the claims are to be found. Koito, 381 F.3d at 1151–52; see also Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1300 (Fed. Cir. 2009). |
Fleming, at *6.
Expert Testimony Adequate in view of claim scope
|[I]n this case, the principal prior art was not a patent or publication but the prior invention of Orr, who testified extensively about it. We conclude that there was sufficiently specific factual support for the invalidity determinations. The jury’s verdict on invalidity rested on two overlapping classes of findings. The first concerned Orr’s prior invention, which the jury found to anticipate claims 18 and 45—a question of fact. TI Grp. Auto. Sys. (N. Am.), Inc. v. VDO N. Am., LLC, 375 F.3d 1126, 1133 (Fed. Cir. 2004). The second concerned the teachings of the asserted combinations of Orr’s prior invention and Hoffberg, Ross, and/or Valen- tine. The content of those teachings and the motivation to combine are fact questions, […]|
Id. at *6.
|The invalidated claims do not contain a large number of limitations, so extensive testimony was not required. Nevertheless, Orr and Escort’s expert, Dr. Grindon, together provided testimony that explained how the prior art taught the limitations of each invalidated claim. For example, claim 45 recites two limitations: (1) “a circuit operable to detect an incoming radar signal” and (2) “a microprocessor operable to disable an alert to the incoming radar signal based at least in part upon the position of the radar detector.” ’038 patent, col. 10, lines 24–30. As to the first limitation, Orr explained that part of his invention consisted of a radar detector that received frequency information, allowing the detection of radar signals. J.A. 6198. As to the second limitation, Orr explained that the radar detector was connected to a GPS navigational card and a laptop, allowing the muting of certain signals “when [he] hit the spacebar” based on position information expressed in cylindrical coordinates. J.A. 6198. As to both limitations, Dr. Grindon evaluated evidence of Orr’s prior invention, including files that showed “routes that [Orr] took driving around under different conditions to collect . . . position and velocity information from a GPS device in his car,” J.A. 6324, and explained that Orr’s invention “definitely shows and discloses . . . the combination for a radar detector with a GPS system . . . combined with a processor, in this case a laptop computer . . . [to] suppress . . . false alerts . . . based upon location . . . [and] the speed of the car . . . [by] press[ing] the space bar on the laptop,” J.A. 6325.|
Id. at *7.
|2. Oral Testimony supported by Corraborating Evidence|
|Legal Standard: Corroborative Evidence||Such evidence is evaluated under “the rule of reason,” whereby “all pertinent evidence is examined in order to determine whether the inventor’s story is credible.” Sandt Tech., Ltd. v. Resco Metal & Plastics Corp., 264 F.3d 1344, 1350 (Fed. Cir. 2001) (citations and internal quotation marks omitted); see also Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1171 (Fed Cir. 2006) (“corroboration is fundamentally about ‘credibility’”). Importantly, “[t]he law does not impose an impossible standard of independence on corroborative evidence by requiring that every point of a reduction to practice be corroborated by evidence having a source totally independent of the inventor; indeed, such a standard is the antithesis of the rule of reason.” Cooper v. Goldfarb, 154 F.3d 1321, 1331 (Fed. Cir. 1998) (citation and internal quotation marks omitted). |
Fleming, at *8-9.
Sufficient documentary evidence
|Here, Orr’s testimony of prior invention was sufficiently corroborated by the documentary evidence. The record contains 1992 data from GPS experiments that Orr ran at the time, e.g., J.A. 7757 (frequency plot entitled “Ka band in False Region Record”), and 1996 notes and correspondence from Orr pertaining to GPS and, more specifically, to “realizing product features identified in . . . [a] brainstorming meeting . . . [by] integrat[ing] a radar detector into . . . automotive navigation systems,” J.A. 7352–53. Most tellingly, perhaps, the record contains a 1996 letter from Greg Blair, Vice President of Cincinnati Microwave, addressed to Orr and other employees, which refers to “entering the ETAK [a type of automotive navi- gation system] business . . . to get speed and position to silence a detector” and to “patent[ing] the concept of . . . vehicle position muting and then working with the ETAK folks for a data link to our detectors,” J.A. 7354.|
Id. at *9.
|Fleming is correct that none of the corroborating evidence constitutes definitive proof of Orr’s account or discloses each claim limitation as written. But the corroboration requirement has never been so demanding. See Cooper, 154 F.3d at 1331. It is a flexible, rule-of- reason demand for independent evidence that, as a whole, makes credible the testimony of the purported prior inventor with regard to conception and reduction to practice of the invention as claimed.|
Id. at *10.
|3. Abandonment of invention|
|Legal Standard: abandondment, suppression, concealment||Abandonment, suppression, or concealment may be shown by proof of the prior inventor’s active efforts to do so or “may be inferred based upon the prior inventor’s unreasonable delay in making the invention publicly known.” Dow Chem. Co. v. Astro–Valcour, Inc., 267 F.3d 1334, 1342 (Fed. Cir. 2001); see also Fox Grp., Inc. v. Cree, Inc., 700 F.3d 1300, 1305–06 (Fed. Cir. 2012). Whether a delay is sufficiently reasonable to avoid the inference “has consistently been based on equitable principles and public policy as applied to the facts of each case.” Checkpoint Sys., Inc. v. U.S. Int’l Trade Comm’n, 54 F.3d 756, 761 (Fed. Cir. 1995) (citation and internal quotation marks omitted). For example, “delay between the first reduction to practice and public disclosure” is excused “if the inventor continued to refine, perfect, or improve the invention.” Eolas Techs. Inc. v. Microsoft Corp., 399 F.3d 1325, 1333 (Fed. Cir. 2005). Moreover, even “a long period of inactiv- ity need not be a fatal forfeiture, if the first inventor resumes work on the invention before the second inventor enters the field.” Paulik v. Rizkalla, 760 F.2d 1270, 1272 (Fed. Cir. 1985).|
Fleming, at *11.
No evidence of efforts to suppress or conceal
|In this case, there is no evidence of any active efforts to suppress or conceal. And we find the timing of Orr’s activities leading to his June 1999 patent application not to warrant an inference of abandonment, suppression, or concealment. The evidence is sufficient to establish the following facts, covering three periods starting from the April 1996 reduction to practice.|
In the first period, before the February 1997 date of Cincinnati Microwave’s bankruptcy, Cincinnati Micro- wave had great interest in the project, J.A. 6094, and Orr studied, refined, and improved his invention: he studied “selective availability,” i.e., signal interference by the military that impaired the use of his invention, J.A. 6095, and conducted field testing and wrote additional code to perfect his invention, J.A. 6104–22. In the third period, after Orr started working at Escort in the summer of 1998, he was immediately put to work on his invention, and he continued this work at least until he filed for his own patent in June 1999. […] What happened in the middle period—between Febru- ary 1997 and summer 1998—is this: For a period of
“approximately 13 months after the bankruptcy,” Orr joined another firm to work with “a group of engineers that were designing a cordless telephone.” J.A. 6123.
Id. at *11-12.
|In these circumstances, we do not infer suppression, concealment, or abandonment for two reasons. First: In making his argument in this court and in the district court, Fleming’s position has been that his priority date is April 14, 1999, when he filed his patent application. That date is later than the dates of Orr’s conception (1988) and reduction to practice (1996)—not in dispute for purposes of the present issue. It also is later than the latest possible date—summer 1998—that the evidence establishes Orr resumed work on his prior invention when joining Escort. Even if the focus were solely on Orr (thus disregarding Escort, the patent-rights owner), and even if Orr had abandoned his invention before summer 1998, the defense of abandonment is properly rejected on the ground that Orr resumed his active work before Fleming’s April 1999 priority date. See Paulik, 760 F.2d at 1272.|
Id. at *12.
|For the foregoing reasons, we affirm the district court’s judgment upholding the jury’s verdict.|
Fleming, at *15.
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