774 F.3d 1371 (Fed. Cir. 2014), 2014-1331, Fleming v. Escort Inc.

Docket Nº:2014-1331, 2014-1371
Citation:774 F.3d 1371, 113 U.S.P.Q.2d 1426
Opinion Judge:Taranto, Circuit Judge.
Party Name:HOYT A. FLEMING, Plaintiff-Appellant, v. ESCORT INC. AND BELTRONICS USA, INC., Defendants-Cross-Appellants
Attorney:MICHAEL S. DOWLER, Park, Vaughan, Fleming & Dowler, LLP, of Houston, Texas, argued for plaintiff-appellant. GREGORY F. AHRENS, Wood, Herron & Evans, L.L.P., of Cincinnati, Ohio, argued for defendants-cross-appellants. With him on the brief was BRETT A. SCHATZ.
Judge Panel:Before TARANTO, BRYSON, and HUGHES, Circuit Judges.
Case Date:December 24, 2014
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit
 
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Page 1371

774 F.3d 1371 (Fed. Cir. 2014)

113 U.S.P.Q.2d 1426

HOYT A. FLEMING, Plaintiff-Appellant,

v.

ESCORT INC. AND BELTRONICS USA, INC., Defendants-Cross-Appellants

2014-1331, 2014-1371

United States Court of Appeals, Federal Circuit

December 24, 2014

Page 1372

Appeal from the United States District Court for the District of Idaho in No. 1:09-CV-00105-BLW, Chief Judge B. Lynn Winmill.

MICHAEL S. DOWLER, Park, Vaughan, Fleming & Dowler, LLP, of Houston, Texas, argued for plaintiff-appellant.

GREGORY F. AHRENS, Wood, Herron & Evans, L.L.P., of Cincinnati, Ohio, argued for defendants-cross-appellants. With him on the brief was BRETT A. SCHATZ.

Before TARANTO, BRYSON, and HUGHES, Circuit Judges.

OPINION

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Taranto, Circuit Judge.

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. We affirm.

Background

Hoyt Fleming owns two reissue patents--U.S. Patent Nos. RE39,038 (issued Mar. 28, 2006) and RE40,653 (issued Mar. 10, 2009)--issued under 35 U.S.C. § 251. Both relate to radar detectors for detecting police signals. They claim methods for incorporating, as well as apparatuses that

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incorporate, a Global Positioning Satellite (GPS) unit into a radar detector. The incorporated GPS can reduce false alarms ( i.e., the signaling of a police presence when none exists) by allowing the detector to disregard, or " lock out," certain signals from an identified location known to produce such false alarms ( e.g., a storefront door opener transmitting a radar signal that can be mistaken for a police presence).

Claim 1 of the '038 patent is representative of the method claims. It reads:

1. A method, executed by a device having a position, of generating an alert to an incoming radar signal having a frequency and a signal strength, the method comprising the acts of:

(a) detecting the incoming radar signal; (b) determining the position of the device that detected the incoming radar signal; and (c) generating an alert if the position of the device is not within a predetermined distance of a predetermined position.

'038 patent, col. 6, lines 49-58.

Claim 18 of the '038 patent is representative of the apparatus claims. It reads:

18. A radar detector for alerting an operator of a motor vehicle to an incoming police radar signal comprising:

(a) a microprocessor; (b) a circuit coupled to the microprocessor for detecting the incoming police radar signal; and (c) a global positioning system receiver coupled to the microprocessor and operable to provide the microprocessor with data that indicates the position of the radar detector.

'038 patent, col. 7, lines 53-61.

On March 10, 2009, Fleming sued Escort for infringement of his two patents. At the heart of Escort's defenses was the contention that Steven Orr, who works for Escort as a consultant, had invented a GPS-incorporating radar detector before Fleming did--a prior invention Escort invoked to support anticipation and obviousness challenges under 35 U.S.C. § § 102(g) and 103 (2006).1 Fleming's claimed priority date is April 14, 1999--the filing date of his original patent application. Orr alleged that he conceived his invention in 1988 and made a working embodiment that reduced it to practice in April 1996. From 1988 to 1996, Orr was working at Cincinnati Microwave, which owned the potential patent rights to the alleged invention at issue. Cincinnati Microwave entered bankruptcy on February 14, 1997. With Orr assisting in the bankruptcy process, Escort acquired Cincinnati Microwave's assets, including the potential patent rights to the alleged Orr invention, during the summer of 1997. Escort sought Orr's assistance in the new enterprise, and Orr began working at Escort in July 1998. He filed a patent application to claim his alleged invention, with Escort as assignee, on June 14, 1999, two months after Fleming filed his application.

The jury in this case found most of Fleming's asserted claims to be infringed by Escort and not to be invalid. It found invalidity, however, as to five claims of the '038 patent--claims 1, 18, 45, 47, and 48. The jury invalidated claim 45 as anticipated

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by Orr's prior invention. It invalidated claim 18 as anticipated by the Orr invention and also for obviousness in light of Orr's invention and two prior-art patents, Hoffberg (U.S. Patent No. 6,252,544) and Ross (U.S. Patent No. 5,977,884). And it invalidated claims 1, 47, and 48 for obviousness in light of Orr's prior invention and two prior-art patents, Hoffberg and Valentine (U.S. Patent No. 5,146,226).

Fleming subsequently sought judgment as a matter of law to reverse the jury's five invalidity determinations. He argued that the testimony regarding invalidity was conclusory, that Orr's testimony regarding his prior invention was insufficiently corroborated, and that Orr's prior invention--even if it existed--had been abandoned, suppressed, or concealed within the meaning of 35 U.S.C. § 102(g)(2), disqualifying it as a basis for invalidity. Escort, in turn, sought judgment that Fleming's patents were invalid, arguing that Fleming had not identified an " error" in his original patent (U.S. Patent No. 6,204,798), a prerequisite to securing a reissue patent under section 251. The district court denied both sides' motions.

Both parties appeal the district court's decision. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

Discussion

We review the denial of a motion for judgment as a matter...

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