Post-Grant Review Chickens Come Home To Roost: The Federal Circuit Clarifies The Effect Of Reexamination On Equitable Estoppel And Laches

The Federal Circuit recently overturned a decision estopping the plaintiff from pursuing its infringement claims in the United States District Court for the Eastern District of Arkansas, and clarified the effect of reexamination on equitable estoppel and laches. In John Bean Technologies Corporation v. Morris & Associates, Inc., the Federal Circuit held that District Court abused its discretion applying equitable estoppel to bar John Bean Technologies Corp.'s ("John Bean") infringement action without considering the impact of an intervening ex parte reexamination on the claims of the asserted patent.

By way of background, John Bean and the defendant, Morris & Associates, Inc. ("Morris"), are fierce competitors in the poultry chiller market, in which they are the only U.S. participants. In 2002, John Bean began notifying Morris' customers that Morris equipment infringed John Bean's U.S. Patent No. 6,397,622 ("'622 Patent"). Morris alleged by letter response that the '622 Patent is invalid, and provided factual support and evidence for this contention. Morris also accused John Bean of making misleading statements to its customers, in violation of unfair competition laws.

John Bean did not respond. Eleven years later, John Bean filed a request for ex parte reexamination of the '622 Patent. The United States Patent and Trademark Office rejected both claims of the '622 Patent as invalid. In response, John Bean amended the original two claims of the patent and added six new claims. A month after the reexamination certificate issued, and 12 years after Morris' letter, John Bean filed a complaint against Morris for patent infringement.

The complaint did not allege that Morris engaged in...