Morris & Associates, Inc. v. John Bean Technologies Corp., 2018 WL 5078036 (U.S.) (on petition for writ of certiorari)

In Petrella v. Metro-Goldwyn-Meyer, Inc., 134 S.Ct. 1962 (2014), and SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC, 137 S.Ct. 954 (2017), this Court held that laches is unavailable to bar actions for copyright and patent infringement brought within the respective statutes of limitation. In these cases, however, this Court noted that in contrast to laches, equitable estoppel remains a viable equitable remedy “long recognized as available in actions at law” against “unscrupulous patentees” where there is “misleading and consequent loss.”

For over a century, this Court and the Federal Circuit have held that a finding of equitable estoppel gives an accused infringer an implied license to a patented invention for the life of the patent, thereby constituting a waiver of the right to sue by the patentee. Yet for the first time, the Federal Circuit panel held that an implied license arising by equitable estoppel does not extend to the entire patented invention, but is instead restricted on a claim-by-claim basis to exclude claims added or substantially amended through ex parte reexamination, resulting in the implied license applying to select individual claims of a patent but not all.

The two questions presented are:

1. Whether the Federal Circuit erred and contradicted a century of this Court’s licensing precedent in holding that implied license rights to a patent arising in equity, particularly equitable estoppel, do not attach to the entire patented invention but instead attach only to a subset of the patent’s individual claims?

2. Whether the Federal Circuit erred and violated Morris’s due process rights by deciding an issue of first impression sua sponte not raised by the parties before the District Court or on appeal, which resulted in the court of appeals creating a new artificial categorical exception that restricts an accused infringer’s pre-established implied license rights arising in equity?

One thought on “

  1. 1

    Does the desire to moot the distinction between claims of a patent as opposed to “taking the entire patent” necessarily imply that the acts here (claims added or substantially amended through ex parte reexamination) necessarily offend a sense of equity — in and of themselves?

    Are not still alive (against those same “new claims”) any past, new, or additional arguments that may have had the effect of attaching equitable estoppel to the original claims?

    Does the decision below (caveat: I have not read that decision) really create the dire predictament described? Is the “separation” one of a “de facto, no equitable estoppel could ever attach for whatever reason” situation? Or does the desired end want the opposite — a de facto estoppel MUST attach to “new claims” even if the cause of the estoppel may not reach the “new claims?”

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