Patent Case Summaries February 24, 2021

Patent Case Summaries | Week Ending February 19, 2021

A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.

John Bean Technologies Corp. v. Morris & Associates, Inc., Nos. 2020-1090, -1148 (Fed. Cir. (E.D. Ark.) Feb. 19, 2021). Opinion by Reyna, joined by Lourie and Wallach.

John Bean Technologies filed a patent infringement suit against its main competitor, Morris & Associates. The district court awarded Morris summary judgment that John Bean’s infringement claims were barred by equitable intervening rights.

Years before the lawsuit, Morris had sent John Bean a letter explaining that John Bean’s patent was invalid. After not receiving any response, Morris researched, developed, and sold products that included features described in the patent. Eleven years later, John Bean sought and obtained a reissue patent and then immediately filed its lawsuit against Morris.

In awarding Morris summary judgment based on equitable intervening rights, the district court weighed several factors. The court found that Morris had made “substantial preparation” based on years of research and development, that Morris had converted two-thirds of its business to the product at issue, and that John Bean acted in bad faith by waiting more than a decade to dispute Morris’s invalidity claims.

The Federal Circuit affirmed. Under 35 U.S.C. § 252, a court may permit continued manufacture, use, and sale of a product where “substantial preparation was made before the grant of the reissue” patent, under terms that “the court deems equitable for the protection of investments made or business commenced before the grant of the reissue.” John Bean argued that the district court abused its discretion because, among other reasons, Morris had recouped the investments made prior to the grant of the reissue. John Bean argued that this was sufficient to protect Morris’s investments under § 252, thus defeating the grant of the equitable remedy.

The Federal Circuit disagreed with that argument. Addressing a question of first impression, the Federal Circuit noted that the phrase “protection of investments” in § 252 “does not specify when the protection begins and ends, or precisely which type of investments are entitled to protection.” The court explained that “recoupment” of investments is a factor, “but it is not the sole factor a district court must consider, nor is it a factor that must be weighed more heavily, when the court balances the equities.” Ultimately, the Federal Circuit determined that the district court did not abuse its discretion in awarding summary judgment as to equitable intervening rights.

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Canfield Scientific, Inc. v. Melanoscan, LLC, No. 2019-1927 (Fed. Cir. (PTAB) Feb. 18, 2021). Opinion by Newman. Joined by Dyk and Reyna.

Melanoscan owns a patent relating to detection, diagnosis, and treatment of skin cancer and other detectable skin conditions. The claimed device is an enclosure fitted with cameras and lights spaced “vertically,” “laterally,” and “on opposite sides of the centerline” to capture the imaging and measurement of a patient’s surface.

Canfield initiated an IPR challenging two independent claims and a host of dependent claims on the ground of obviousness, using five references relating to multiple-camera enclosures. The main reference, “Voigt,” disclosed every limitation except its cameras faced a rear wall and were not spaced vertically, laterally, and along the centerline. Two other references, “Hurley” and “Crampton,” disclosed open, three-dimensional body imaging systems where the subject was placed in the center. A fourth reference discussed an imaging system that used up to twenty-four cameras around the subject to increase resolution and reduce shadows. The final reference was pertinent to the dependent claims.

During the IPR, the parties presented conflicting expert testimony on the question of obviousness, including whether persons of ordinary skill in the art would have been motivated to modify the camera systems in the prior art. For instance, they disputed whether skilled artisans would have modified Voigt with the arrangement of lights shown in Hurley and Crampton. The Patent Trial and Appeal Board agreed with Melanoscan’s expert and upheld the patentability of the challenged claims. In the Board’s view, the proposed modification would have partially blocked the cameras of both configurations.

The Federal Circuit reversed as to the independent claims, ruling those claims unpatentable as obvious. According to the court, the independent claims “place the subject within the enclosure, as in the prior art, and place multiple cameras and lights within the enclosure, as in the prior art.” As for the dependent claims, the Federal Circuit vacated and remanded so that the Board could make an initial determination of patentability.

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